In the latest chapter of a long-running legal dispute, Eddie’s Pizza has filed suit in federal court against a Commack restaurant to protect the trademarked name of its famed pizza.
The popular eatery has maintained a trademark on “Bar Pie” – a shorthand description for its small, thin-crust pizza served at the tables and bar at 2048 Hillside Ave. since 1951.
In papers filed in federal district court on July 31, attorneys Ronald Israel and Nancy Del Pizzo allege that Emilio’s Restaurant & Pizza in Commack has been improperly using the “Bar Pie” and “Bar Pie Americano” term to describe its own pizzas – for the second time in the past decade.
““Defendants’ use of the marks “Bar Pie” and “Bar Pie Americano” is so similar to plaintiff’s Bar Pie mark that it is likely to cause confusion, mistake or deception as to the source or origin of Defendants’ goods,” the lawyers representing Eddie’s Pizza state.
Use of the term, they said, could mislead consumers to think that Emilio’s bar pies are supplied by Eddie’s or that the product is licensed by or affiliated with the Garden City Park pizzeria in some way.
The filing states that Emilio’s attempted to apply the “Bar Pie” label to pizza from its restaurant in 2003. That elicited a cease-and-desist letter at the time, and Emilio’s removed the term from its exterior signage, the attorney’s for Eddie’s Pizza said.
But the attorneys said Eddie’s Pizza recently learned that Emilio’s had started using “Bar Pie” again, along with “Bar Pie Americano” on exterior signage and online menus. So on December 8, 2011 another cease-and-desist letter was sent to Tutto Fresca Italian Food, LLC, the corporation for Emilio’s.
They said a second cease-and-desist letter was subsequently sent to Passione, a recent addition to the company’s restaurants in Carle Place. There was no response to that letter or a third letter sent by certified mail was returned to the plaintiff’s attorneys marked “refused,” Israel and Del Pizzo said.
In the lawsuit, Eddie’s Pizzeria calls on the court to restrain owner Emilio Branchinelli’s restaurants from using the terms “Bar Pies” or “Bar Pies Americano” in any signage or promotion, or using any words, titles. designations or marks that would cause “a likelihood of injury to the business reputation” of Eddie’s Pizza. The suit also seeks to require the defendant to “deliver for destruction” all signs, advertisements, promotional flyers, menus or other written materials bearing the trademark words.
Eddie’s Pizza also wants Branchinelli to pick up the tab on its legal expenses and seeks “further relief as the Court may deem just and proper,” but the filing doesn’t spell out the amount of other damages being sought.
Branchinelli declined to comment on the lawsuit.
Eddie’s Pizza owner Joseph DiVittorio was unable to be reached for comment on the court action.
The court filing states that Eddie’s Pizza has been in existence in New Hyde Park since 1931, and is identified as the ninth oldest pizzeria in the U.S. in “Pizza: A Little Slice of Heaven: The Ultimate Pizza Guide and Companion” written by Ed Levine. It further noted that Eddie’s Bar Pie was featured an episode in the HBO series “Entourage” and has received a “Best of Pizza” designation from www.citiysearch.com for the past four years.
Last year, DiVittorio expanded his business beyond New Hyde Park with food trucks and pizza carts serving up the bar pies in various Manhattan neighborhoods.
The new business was featured on The Food Network’s “The Great Food Truck Race,” the filing said.
