Fifteenth Ave. Food Corp. v Sibstar Bread Inc.
Annotate this CaseDecided on June 1, 2007
Supreme Court, Kings County
Fifteenth Avenue Food Corp., Plaintiff,
against
Sibstar Bread Inc., et. ano., Defendants.
37745/06
Attorney for Plaintiff:
Edward W. Miller, Esq.
575 Third Avenue
New York, New York 10022
Attorney for Defendants: Michael C. Barrows, Esq.
300 Park Avenue
New York, New York 10022
Carolyn E. Demarest, J.
Upon the foregoing papers in this action alleging unfair trade practices in violation of General Business Law § 133 and seeking a permanent injunction, plaintiff Fifteenth Avenue Food Corp (plaintiff) moves for a preliminary injunction, enjoining and restraining defendants Sibstar Bread Inc. (Sibstar) and Edward Finkelstein (Finkelstein) (collectively, defendants), their agents, servants, and employees, and all other persons acting in conjunction with them, during the pendency of this action, from producing or utilizing, in any fashion, any bakery goods packaging materials imitative of its packaging materials or bearing a business name imitative of its business name.
Plaintiff is a wholesale and retail bakery which manufactures and distributes kosher baked goods to retail food sellers, primarily in Brooklyn, who then sells the goods to the consuming public. Plaintiff has been using the name Brooklyn Kosher Bakery on its packaging for one of its most popular breads for at least 15 years. Sibstar is also a wholesale and retail bakery which manufactures and distributes baked goods to retail food sellers, primarily in Brooklyn, and Finkelstein is Sibstar's [*2]president. Sibstar manufactures 20 varieties of bread. Since January 2001, Mikron Enterprises, Inc. (Mikron) has manufactured Sibstar's bread packaging, including the packaging for its Brooklyn Kosher Bread variety. The packaging manufactured by Mikron utilized by Sibstar for its Brooklyn Kosher Bread is the identical shade of brown color, and contains the same font, size, format, and layout as the packaging utilized by plaintiff for its Brooklyn Kosher Bakery bread.
On August 6, 2006, plaintiff suspended its business activities due to a legal dispute (which was subsequently resolved). During plaintiff's absence from the marketplace that summer, Sibstar changed its packaging for its Brooklyn Kosher Bread by adding a brown border and an "OK" kosher insignia. The brown border with the words Kosher Bread written along it was identical to the brown border with the words Kosher Bakery along it, which had been utilized on plaintiff's bread packaging. The OK symbol was the symbol which had appeared on plaintiff's bread packaging. Such a symbol certifies that a product is under kosher supervision as was plaintiff's product. Sibstar, however, used this symbol despite the fact that it was not under OK supervision and did not have this form of kosher certification.
Plaintiff recommenced its business activities on October 25, 2006. Since Sibstar continued to sell its Brooklyn Kosher Bread in the new packaging, plaintiff's attorney, in December 2006, informed defendants that consumers were becoming confused between Sibstar's Brooklyn Bread and plaintiff's Brooklyn Bakery bread, and demanded that Sibstar change its packaging. Defendants removed the border and the OK symbol (retaining a K), and resumed utilizing Sibstar's former packaging. Plaintiff asserts, however, that this is insufficient since the public's confusion emanating from Sibstar's use of the packaging from the summer of 2006 until December 2006 cannot be undone by its return to its former packaging. Furthermore, plaintiff claims that Sibstar's present packaging, in any event, utilizes its name and packaging in a manner which deceives and misleads the public, and constitutes an unfair trade practice pursuant to General Business Law § 133.
On December 7, 2006, plaintiff filed this motion against defendants, alleging a violation of General Business Law § 133, and seeking a permanent injunction restraining defendants from the further use of packaging imitating the packaging and name of its Brooklyn Bakery bread. Plaintiff, by its instant motion, now seeks a preliminary injunction for this same relief.
In addressing plaintiff's motion, the court notes that a trade name is a valuable business asset which is protected under General Business Law § 133 (see Blaich Assocs. v Coach/Blaich Real Estate of Manhasset, 186 Misc 2d 594, 595 [2000]). General Business Law § 133 prohibits an individual, firm, or corporation from using a name "with intent to deceive and mislead the public" (see Edward F. Hallahan, Inc. v Hallahan, McGuinness & Lorys, Ltd., 275 AD2d 691, 692 [2000]; Dong Wook Park v Michael Parke Don Group, 12 Misc 3d 1182[A], *8 [2006]; Wisell v Indo-Med Commodities, 11 Misc 3d 1089 [A], *13 [2006]). It provides: "No person, firm or corporation shall, with intent to deceive or mislead the public, assume, adopt or use as, or as part of, a corporate, assumed or trade name, for advertising purposes or for the purposes of trade, or for any other purpose, any name, designation or style, or any symbol or simulation thereof, or a part of any name, designation or style, or any symbol or simulation thereof, which may deceive or mislead the public as to the identity of such person, firm or corporation or as to the connection of such person, firm or corporation with any other person, firm or corporation. . ."[*3]
Plaintiff alleges that Sibstar's packaging and the use of the name Brooklyn Kosher Bread violates General Business Law § 133. It seeks a preliminary injunction pursuant to General Business Law § 133, which affords the remedy of injunctive relief for such a violation by providing: "Whenever there shall be an actual or threatened violation of this section, an application may be made to a court or justice having jurisdiction to issue an injunction, upon notice to the defendant of not less than five days, to enjoin and restrain such actual or threatened violation; and if it shall appear to the satisfaction of the court or justice that the defendant is in fact assuming, adopting or using such name, or is about to assume, adopt or use such name, and that the assumption, adoption or use of such name may deceive or mislead the public, an injunction may be issued by said court or justice, enjoining and restraining such action or threatened violation without requiring proof that any person has in fact been deceived or misled thereby."
Defendants, in opposition to plaintiff's motion, claims that actual fraud is the essence of the wrong at which General Business Law § 133 is directed. They argue that, therefore, an injunction should only be issued if this court finds that plaintiff has made a conclusive showing that they intended to deceive and mislead the public by using a business name similar to its name.
Defendants' argument is rejected. The explicit language of General Business Law § 133 does not require such a conclusive showing. Rather, as quoted above, an injunction may be issued "if it shall appear to the satisfaction of the court. . .that the defendant is in fact assuming, adopting or using such name. . .[which]. . .may deceive or mislead the public" (emphasis supplied). Moreover, plaintiff is not seeking summary permanent injunctive relief requiring conclusive evidence and the absence of any factual issues as would authorize the granting of summary judgment (see Liosis v Maratos, 28 AD2d 1115, 1115 [1967]; Cut & Curl v Giovinazzo, 28 AD2d 541, 541 [1967]), but a preliminary injunction in this plenary action brought by it. "The court may enjoin the use of a misleading name without proof of intent to deceive or the existence of actual confusion" (Varsity House v Varsity House, 377 F Supp 1386, 1388 [ED NY 1974]). Injunctive relief is available for unfair competition when "the public is likely to confuse the defendant's name with that of the plaintiff" (Gasoline Heaven at Commack v Nesconset Gas Heaven, 191 Misc 2d 646, 648 [2002]).
In order to prevail in obtaining a preliminary injunction, a plaintiff "must show (a) irreparable harm and (b) either (1) likelihood of success on the merits or (2) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly toward the party requesting injunctive relief'" (Gasoline Heaven at Commack, 191 Misc 2d at 649, quoting Blaich Assocs., 186 Misc 2d at 596-597; see also CPLR6311). "Irreparable harm is shown by demonstration that the plaintiff will lose control over the reputation of its trade name pending trial" (Gasoline Heaven at Commack, 191 Misc 2d at 649; see also McDonald's Corp. v Kristina Denise Enters., 1999 WL 709980, *1 [2d Cir 1999]; Power Test Petroleum Distribs. v Calcu Gas, 754 F2d 91, 95 [2d Cir 1985]).
In this regard, an injunction may be issued when it has been shown that a trade name has acquired a secondary meaning. A secondary meaning is established when the name's primary significance to the consuming public is not the descriptive information it imparts, but, rather, the mark's association with the plaintiff's product (see Gasoline Heaven at Commack, 191 Misc 2d at [*4]648). Moreover, even in the absence of a showing of secondary meaning, it is sufficient for a plaintiff to sustain the issuance of an injunction if the trade dress of the second comer is confusingly similar to its own (see Ideal Toy Corp. v Chinese Arts & Crafts, 530 F Supp 375, 378 [SD NY 1981]). Therefore, the plaintiff will be entitled to an injunction in equity if it shows that the defendant's use of the plaintiff's trade name "is likely to cause confusion, mistake, or deception; actual confusion need not be shown" (Frank's Rest. v Lauramar Enters., 273 AD2d 349, 350 [2000]; see also Allied Maintenance Group v Allied Mech. Trades, 42 NY2d 538, 543 [1977]; Gasoline Heaven at Commack, 191 Misc 2d at 649).
Here, the names of plaintiff's Brooklyn Kosher Bakery bread and Sibstar's Brooklyn Kosher Bread contain the same two first words. In fact, the first 15 of the 19 letters of the title of Sibstar's bread are identical to the first 15 letters of plaintiff's bread's name. Cases where there has been a changing of one or two words of a three-word business or product title have generally resulted in the granting of preliminary injunctions (see e.g. Fusha Japanese Rest. v Fusha,17AD3d 226, 227 [2005]; Frank's Rest., 273 AD2d at 350; Columbia Broadcasting System v Columbia of NY,97 NYS2d 455, 456-457 [1950], affd 277 App Div 856 [1950]). This is because such similarity in names evidences that the defendant harbored an intent to deceive the public (see Staten Is. Bd. of Realtors v Smith, 298 AD2d 592, 594 [2002]).
The similarity in the names of plaintiff's bread and Sibstar's bread is further compounded by the fact that the name, Brooklyn Kosher Bread, is in the identical print, size, font, and format, and in the same location on Sibstar's packaging as the name, Brooklyn Kosher Bakery, is placed and printed on plaintiff's packaging. The net weight of the bread and the distributor are also identically placed. Sibstar's packaging lists the ingredients in the same location and similarly displays the term "Today's Special" in the identical location as appears on plaintiff's packaging. Sibstar even prints the name in precisely the same brown color as that which appears upon plaintiff's packaging. Thus, since Sibstar is utilizing the similar name of its product in the center of a package which is very similar to plaintiff's package, it is even more likely to confuse than if Sibstar utilized this name in the context of a different and distinguishable package design.
Moreover, plaintiff has established actual confusion, arguably the "best evidence of a likelihood of confusion" (Staten Is. Bd. of Realtors v Smith, NYLJ, May 1, 2002, at 24, col 3 [Sup Ct, Richmond County]). This confusion is evinced by an announcement which was printed in the November 22, 2006 edition of The Torah Time's column on kosher food affecting the orthodox Jewish community. Its announcement informed such community that OK Kosher did not certify any product distributed by Sibstar. However, it confused Sibstar's product with plaintiff's product, identifying the uncertified product with the unauthorized OK symbol as " Brooklyn Kosher Bakery' Bread in 1 ½ lb (24 oz) bags," which "was being sold in Brooklyn for years and was used by everyone."
David Berkowitz, plaintiff's general manager, in his sworn affidavit, also attests that he and plaintiff have received numerous phone calls from customers who confused plaintiff's product for that of Sibstar's Kosher Brooklyn Bread, and, as a result, questioned the validity of plaintiff's kosher certification. He states that plaintiff has lost customers as a result of this confusion. Consequently, the effect of Sibstar's activity had been to mislead and deceive the public as to the kosher certification of its product and to unfairly cast doubt on plaintiff's kosher certification (see generally Robles v 4 Brothers Homes, 2 Misc 3d 1002 [A],*6 [2003]). [*5]
Thus, plaintiff has demonstrated that it has and continues to sustain damages in two ways. First, it has lost customers due to their confusion by the name Brooklyn Kosher Bread and their belief that they are purchasing plaintiff's product when, in fact, they are purchasing Sibstar's product. Second, it has lost customers due to their confusion that it is plaintiff's truly kosher certified bread, rather than Sibstar's bread, which was publicly branded as falsely carrying an OK Kosher symbol and is really not kosher.
In response, defendants do not raise a serious counterargument to the actual confusion shown nor have they offered any evidence that Sibstar's product has not confused the public to the detriment of plaintiff. Instead, defendants, in defending against plaintiff's claims, contend that the identical use of the terms, Brooklyn Kosher, as part of Sibstar's product name on its packaging was intended as a description of the variety of bread contained within the package. Specifically, they claim that its use of the name Brooklyn Kosher Bread is simply an innocent effort to describe one of its 20 different varieties of breads as it is a generic name for a type of bread, just as white, wheat, and pumpernickel describe types of breads. Ron Levkovitz, the president of Mikron, which (as previously noted) has manufactured the plastic packaging for Sibstar since January, 2001, attests, in his sworn affidavit, that it is known to him that Brooklyn Kosher Bread describes a specific type or variety of bread, and does not refer to plaintiff's business or trade name. Defendants claim that the use of the term Brooklyn Kosher Bread was used simply to advise the public of the type of bread contained within the bag.
Defendants' contention is patently lacking in merit. The term, Brooklyn Kosher, is not descriptive of such bread's taste or ingredients nor does it identify it as any recognized variety or type of bread well known to consumers. Indeed, defendants' assertion that Brooklyn Kosher is a type of bread is belied by the fact that the list of ingredients notes that this bread comes in the variety of pumpernickel.
Defendants also assert that unlike plaintiff's packaging, Sibstar does not include the words "under strict rabbinical supervision" or a rabbi's name on its packaging. They claim that due to this, Sibstar's bread is not purchased by the orthodox Jewish community, the primary end users of plaintiff's baked goods. They argue that, therefore, Sibstar's bread does not target and is not sold to the same end users as plaintiff's bread.
Defendants' argument is rejected. The term kosher in Sibstar's Brooklyn Kosher Bread evidences that it is targeting the Jewish population. Although defendants have removed the OK symbol from Sibstar's Brooklyn Kosher Bread packaging, such packaging still displays a "K," identifying the bread as a kosher product, and the term kosher in the name of its bread product is prominently displayed thereon. Thus, consumers who do not carefully scrutinize the label and who are familiar with plaintiff's strictly kosher product could likely confuse it with plaintiff's product, believing that it meets this higher kosher standard, particularly since Sibstar's product had displayed the OK symbol on its packaging during the time period from the summer of 2006 until December 2006.
Furthermore, Sibstar has been and continues to place its Brooklyn Kosher Bread in the stores which carry plaintiff's bread, and in stores in Brooklyn which are in direct competition with stores that carry plaintiff's bread. Thus, Sibstar's Brooklyn Kosher Bread is in direct competition with plaintiff's bread. In any event, even if "the parties are not in actual competition or in identically the same line of business," this does not excuse or justify a violation of General Business Law § 133 [*6](Frank's Rest., 273 AD2d at 350, quoting Harvey Mach. Co. v Harvey Aluminum Corp., 9 Misc 2d 1078, 1081 [1957]; see also Gasoline Heaven at Commack, 191 Misc 2d at 649).
In addition, Finkelstein states that Sibstar manufactures 20 varieties of bread products, including the Brooklyn Kosher Bread product at issue. Defendants have submitted copies of the various packaging used by Sibstar on four other varieties of its bread. These packages strikingly vary from Sibstar's Brooklyn Kosher Bread product in that these other packages contain Russian letters and words and symbols, evidencing that these breads are marketed for Brooklyn's Russian population. It is only the Brooklyn Kosher Bread package which contains no Russian whatsoever and is written entirely in English. This evidences that Sibstar is marketing its Brooklyn Kosher Bread to different customers than its regular customer base. Additionally, Sibstar's Brooklyn Kosher Bread package is the only one of its bread packages which (like plaintiff's bread) has no graphics, is 22 ounces, and lacks diagonal or non-straight print, and is in the color brown.
Sibstar further asserts that it has been manufacturing and distributing its Brooklyn Kosher Bread in this packaging for at least six years. It thus argues that plaintiff is guilty of laches in not seeking injunctive relief earlier. Sibstar's argument is unavailing. "A mere acquiescence or delay, not amounting to an estoppel, does not bar an action equitable in character" (Matter of Allen Carpet Cleaning & Rug Weaving Co. v Martzolf, 29 Misc 2d 205, 208 [1961]; see also Columbia Records v Goody, 278 App Div 401, 407 [1951]). "Laches is not a bar to an equity action in the absence of proof of equitable estoppel, reliance and damages," which have not been shown here (Varsity House, 377 F Supp at 1388). Moreover, the actual intent to deceive appears to have first arisen during the summer of 2006 when plaintiff was absent from the marketplace, and Sibstar changed its packaging to mimic plaintiff's packaging (see Matter of Allen Carpet Cleaning & Rug Weaving Co., 29 Misc 2d at 208 ). Thus, the court does not find laches on the part of plaintiff.
Defendants further assert that David's Bakery also manufactures a bread which is called Brooklyn Kosher Bread and which has similar packaging to plaintiff's packaging, and that Handmade Kosher Bakery also utilizes packaging similar to that of plaintiff for its bread. Defendants complain that these two other bakeries were not named as defendants herein. Plaintiff points out, however, that its negotiations and any legal action it may take against David's Bakery are independent of its claim against Sibstar. Furthermore, while Handmade Kosher Bakery's packaging is similar in style to plaintiff's packaging, this bread appears to be distributed in Queens and does not utilize the term, Brooklyn, in its name or on its package. Nevertheless, according to plaintiff, Handmade Kosher Bakery has entered into a voluntary agreement with it to discontinue use of its packaging in this form.
Thus, plaintiff has adequately demonstrated that Sibstar's use of the name Brooklyn Kosher, coupled with the color, style, font, size, format, and design of Sibstar's packaging, is likely to confuse and mislead the public and dilute plaintiff's trade name. Based on the demonstrated similarities, plaintiff has shown a likelihood of ultimate success on the merits and irreparable injury absent the granting of a preliminary injunction. Defendants are now trading on plaintiff's well established name recognition and reputation. While defendants assert that plaintiff can be compensated by money damages, plaintiff, at oral argument, stated that it will not seek money damages, and only seeks injunctive relief so as to prevent further loss of sales and irreparable damage to its good will and reputation caused by the confusion of its bread with Sibstar's bread, which does not meet the same kosher certification standard. [*7]
In balancing the equities, the court notes that the purpose of the preliminary injunction is to preserve the status quo during the pendency of the action (see Burmax Co. v B&S Indus., 135 AD2d 599, 600 [1987]; Gasoline Heaven at Commack, 191 Misc 2d at 650). Plaintiff has shown, as plain from the undisputed facts, that the injury to be sustained by it without the injunction is more burdensome than any alleged harm caused to defendants by the imposition of the injunction (see McLaughlin, Piven, Vogel v Nolan & Co., 114 AD2d 165, 174 [1986]; Gasoline Heaven at Commack, 191 Misc 2d at 650). Sibstar will not suffer a loss of the revenue which it generates from the sale of its bread since it may continue to sell its bread, just under a different name and in different packaging, so as distinguish it from plaintiff's bread. While defendants argue that Sibstar had previously used its present packaging for six years prior to the summer of 2006, the adoption of the packaging that Sibstar utilized for half a year has created such confusion in the marketplace that it cannot simply be undone by its return to its former packaging. Additionally, defendants have not shown that a change in their packaging will have any detrimental effect on Sibstar's business, particularly in view of the fact that the packaging on its other bread products vastly differ from that as is on its Brooklyn Kosher Bread product. Thus, plaintiff has met its burden of sufficiently establishing the above referenced requisite prongs of the test for the granting of a preliminary injunction (see CPLR 6311, Gasoline Heaven at Commack, 191 Misc 2d at 648-649).
Accordingly, a preliminary injunction, enjoining defendants from the further use of packaging imitating the packaging and name of plaintiff's Brooklyn Kosher Bakery bread product, is granted. Plaintiff shall post a bond in an amount to be determined upon the serving and filing of a motion by plaintiff to fix the bond amount within 15 days of entry of this decision. Defendants may submit their position on the amount of the bond in the form of opposition or a cross motion. Alternatively, the parties may stipulate to the waiver of a bond or as to the amount and nature of the bond.
This constitutes the decision and order of the court.
E N T E R,
J. S. C.
Some case metadata and case summaries were written with the help of AI, which can produce inaccuracies. You should read the full case before relying on it for legal research purposes.
This site is protected by reCAPTCHA and the Google Privacy Policy and Terms of Service apply.
