Mambo Marks v. Samba Food - Mambo Seafood.pdf

IN THE UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF TEXAS

HOUSTON DIVISION

MAMBO MARKS, LLC and MAMBO SEAFOOD #1, INC. Plaintiffs v. SAMBA FOOD, LLC and ALLEN CHUNG Defendants

§§§§§§§§§

Civil Action No. ________________

DEMAND FOR JURY

PLAINTIFFS’, MAMBO MARKS, LLC AND MAMBO SEAFOOD #1, INC., ORIGINAL COMPLAINT, REQUEST FOR PRELIMINARY AND PERMANENT INJUNCTIONS,

AND JURY DEMAND

Plaintiffs Mambo Marks, LLC and Mambo Seafood #1, Inc. (hereinafter collectively

referred to as “Mambo”) file this Original Complaint, Request for Preliminary and Permanent

Injunctions, and Jury Demand against Defendants Samba Food, LLC (“Samba”) and Allen Chung

(“Chung”) and, for cause of action, state as follows:

NATURE OF THE ACTION

1. This is an intellectual property dispute arising under the Trademark Act of 1946, 15

U.S.C. §1051, et seq., as amended (the Lanham Act) and the Copyright Act of 1976, 17 U.S.C.

§101, et seq., as amended. Mambo and its affiliate companies own and operate seafood restaurants

in Texas. Defendants recently opened a competitive seafood restaurant and, in so doing, have

infringed and are continuing to infringe upon Mambo’s legally protected intellectual property

rights.

Case 4:15-cv-03484 Document 1 Filed in TXSD on 12/01/15 of 25

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2. Mambo seeks injunctive relief, damages, disgorgement of Defendants’ profits,

attorney fees, and costs for trademark infringement and unfair competition under the Lanham Act

and for copyright infringement under the Copyright Act.

JURISDICTION

3. This Court has subject matter jurisdiction over this dispute under 28 U.S.C. §§1331

and 1338.

4. This Court has personal jurisdiction over Defendant Samba Food, LLC because it is

a limited liability company organized and existing under the laws of the State of Texas and

conducts business in the Southern District of Texas.

5. This Court has personal jurisdiction over Defendant Allen Chung because, upon

information and belief, he is a citizen of the State of Texas. Chung lives and conducts business in

the Southern District of Texas.

VENUE

6. Venue is proper in this district under 28 U.S.C. §1391(b)(1), (2) because Defendants

reside in this district and because a substantial part of the events or omissions giving rise to

Mambo’s claims occurred in this district.

PARTIES

7. Plaintiff Mambo Marks, LLC is a limited liability company organized and existing

under the laws of the State of Texas. Mambo’s principal place of business is in Houston, Harris

County, Texas. Plaintiff Mambo Seafood #1, Inc. is organized and existing under the laws of the

State of Texas, with a principal place of business being in Houston, Harris County, Texas.

8. Defendant Samba Food, LLC is a limited liability company organized and existing

under the laws of the State of Texas. Samba may be served through its registered agent, Allen


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Chung, who may be located at 8303 Southwest Freeway, Suite 760, Houston, Texas 77074 or 1217

Tamy Lane, Houston, Texas 77055 or wherever he may lawfully be found.

9. Defendant Allen Chung is an individual residing in Houston, Harris County, Texas.

Chung may be served personally at 1217 Tamy Lane, Houston, Texas 77055 or wherever he may

lawfully be found.

CONDITIONS PRECEDENT

10. Mambo has performed all conditions precedent to filing suit or they have occurred.

FACTS

Mambo’s Intellectual Property

11. MAMBO SEAFOOD® restaurants began operating in Houston in the mid-1990s

under a different name, and in 2001 rebranded as MAMBO SEAFOOD®. Mambo has filed for and

obtained trademark registrations for its trademarks and service marks from the United States Patent

and Trademark Office (“USPTO”), and has registered its original menu with the U.S. Copyright

Office, inclusive of its unique dancing letters design for MAMBO® that is prominently displayed in

its signage, menus and promotional materials. Mambo has consistently provided notice of its

registered trademarks by use of the registered trademark symbol, “®,” in connection with

registered marks, applied copyright notice to its menus and promotional materials, and used the

symbol TM with trademarks that were in the process of obtaining registration from the USPTO

and/or considered trademarks and service marks of Mambo. Today, there are eight MAMBO

SEAFOOD® restaurants throughout the Houston area, one MAMBO SEAFOOD® restaurant in

Dallas, and one MAMBO SEAFOOD® restaurant in McAllen, Texas. MAMBO SEAFOOD®

restaurants serve a variety of American and Latin seafood dishes.


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12. Samba and Chung own and operate SAMBA SEAFOOD, a single restaurant located

in Humble, Harris County, Texas that has opened in the past few months. SAMBA SEAFOOD

serves a variety of American and Latin seafood dishes strikingly similar to those served at the

MAMBO SEAFOOD® restaurants, and its employees regularly, albeit falsely, tell patrons that

SAMBA SEAFOOD and MAMBO SEAFOOD® are related entities. It appears that, to a

significant degree, SAMBA SEAFOOD has simply copied MAMBO SEAFOOD®’s logo, signage,

menu, and other business and advertising materials which clearly infringes on Mambo’s intellectual

property rights.

13. Mambo is the exclusive, legal owner of the rights to the trademark MAMBO

SEAFOOD® in connection with restaurant services, including both the words and design, and is the

exclusive legal owner to the MAMBO® mark and design for restaurant services and for kitchen

utensils, such as insulated sleeves to hold beverages. Further, Mambo owns copyright in the

associated artwork used in the MAMBO SEAFOOD® signage, menus, and corresponding business

materials. Mambo also is the exclusive, legal owner of the rights to the trademarked words

VUELVE a la VIDA® in connection with restaurant services and fish-containing food preparations

for consumption on or off the premises.

14. Mambo’s rights include, inter alia, ownership of United States Trademark

Registration Number 2,635,236 for the word mark MAMBO SEAFOOD®, Registration Number

2,677,416 for the word and design mark MAMBO SEAFOOD®, and Registration Number

3,709,148 for the word and design MAMBO®. Mambo also owns copyright in its menus, signage,

and other promotional materials. This includes Copyright Registration Certificate VA 1-166-438,

covering original artwork in MAMBO SEAFOOD® menus, inclusive of the unique MAMBO® in


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dancing letters design. Mambo’s rights also include, inter alia, ownership of United States

Trademark Registration Number 2,773,318 for the mark VUELVE a la VIDA®.1

15. Mambo has continuously used the trademark MAMBO SEAFOOD® and its

MAMBO® word and design mark in connection with operating its restaurants in the Houston

metropolitan area and elsewhere since 2001. Mambo has continuously used the trademark

VUELVE a la VIDA® in connection with restaurant services and fish-containing food preparations

for consumption on or off the premises since 1996.

16. Mambo has used and promoted its MAMBO SEAFOOD® and MAMBO® word

marks and designs on signage displayed on and around the exterior of its restaurants, in advertising

throughout Texas, and on its restaurants’ menus, among other means of use and promotion.

Furthermore, MAMBO SEAFOOD® restaurants and the products the restaurants sell under the

MAMBO SEAFOOD® mark are of the highest quality and are well and favorably known in the

Houston, Dallas, and McAllen metropolitan areas. As a result of extensive use and promotion of

the MAMBO SEAFOOD® mark, Mambo’s MAMBO SEAFOOD® mark has acquired a favorable

reputation to consumers as an identifier and symbol of Mambo and its products, services, and

goodwill. MAMBO SEAFOOD® restaurants have enjoyed extensive business success, have earned

an excellent reputation, established substantial and favorable goodwill, and have enabled Mambo

and its affiliated companies to earn a substantial profit. Accordingly, the MAMBO SEAFOOD®

mark is strong and is entitled to broad protection.

1 Mambo has attached copies of the trademark and copyright registration certificates referenced herein, and has also attached menus and other promotional materials produced under Mambo’s exclusive right under copyright law to make derivative works of its copyright protected work and/or Mambo’s exclusive rights to use its trademarks in commerce. See Exhibits A-F.


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17. Mambo has used and promoted its VUELVE a la VIDA® mark on its restaurants’

menus since 1996.2 The products Mambo serves at MAMBO SEAFOOD® restaurants under the

VUELVE a la VIDA® mark are of the highest quality and are well and favorably known in the

Houston, Dallas, and McAllen metropolitan areas. One of the well and favorably known dishes

prepared and sold under the VUELVE a la VIDA® mark at MAMBO SEAFOOD® restaurants is the

VUELVE a la VIDA® COCKTAIL, a seafood cocktail containing shrimp, oysters, fish, and

octopus.3

18. As a result of extensive use and promotion of the VUELVE a la VIDA® mark,

Mambo’s VUELVE a la VIDA® mark has acquired a favorable reputation among consumers as an

identifier and symbol of MAMBO SEAFOOD® restaurants, Mambo and its products, services, and

goodwill. Products and services Mambo sells and provides under the VUELVE a la VIDA® mark

at MAMBO SEAFOOD® restaurants have enjoyed extensive business success, earned an excellent

reputation, established substantial and favorable goodwill, and enabled Mambo and its affiliated

companies to earn a substantial profit. Accordingly, Mambo’s VUELVE a la VIDA® mark is

strong and is entitled to broad protection.

19. Mambo has invested, and continues to invest, substantial sums and resources to

promote its products and services offered under the MAMBO SEAFOOD® and VUELVE a la

VIDA® marks.

2 The original use of Mambo’s VUELVE a la VIDA® mark was prior to the rebranding to MAMBO SEAFOOD® in 2001. 3 MAMBO SEAFOOD® restaurants also serve VUELVE a la VIDA® SOUP, VUELVE a la VIDA® MAMBO RANCHERO, and VUELVE a la VIDA® SCAMPI.


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Defendants Opened a Competing Seafood Restaurant Infringing on Mambo’s Marks

20. On August 18, 2011, Chung filed with the County Clerk of Harris County, Texas a

Certificate of Ownership for Unincorporated Business or Profession whereby Chung registered the

assumed name “SAMBA SEAFOOD.”4

21. More than three years later, on December 11, 2014, Chung and others formed a

limited liability company called Samba Food, LLC.5

22. On or about August 4, 2015, the Texas Alcoholic Beverage Commission (“TABC”)

issued a license to Samba Food, LLC d/b/a Samba Seafood Restaurant.6 However, neither the

Texas Secretary of State nor the County Clerk of Harris County has any record of Samba Food,

LLC being the owner of the trade name “Samba Seafood” or “Samba Seafood Restaurant.”

23. In August 2015, Samba and Chung opened a Latin seafood restaurant located at

7855 North Sam Houston Parkway East, Humble, Harris County, Texas, 77396, and began

operating the restaurant under the name “SAMBA SEAFOOD.”7 This SAMBA SEAFOOD

restaurant is less than 10 miles from the MAMBO SEAFOOD® restaurant located at 10810 North

Freeway, Houston, Texas, 77037. The SAMBA SEAFOOD restaurant serves American and Latin

style seafood dishes strikingly similar to the American and Latin style seafood dishes MAMBO

SEAFOOD® serves.8

4 Mambo has attached Chung’s SAMBA SEAFOOD Assumed Name Certificate as Exhibit G. 5 Mambo has attached Samba Food, LLC’s Certificate of Formation as Exhibit H. 6 Mambo has attached as Exhibit I a copy of the results from a TABC Public Inquiry conducted on the TABC website identifying Defendant Samba as the owner of the trade name “Samba Seafood Restaurant.” 7 Even though there is no record of “SAMBA SEAFOOD” being a registered mark with the United States Patent and Trademark Office, the “®” symbol appears next to “SAMBA SEAFOOD” at the top of the SAMBA SEAFOOD menu. See Exhibit J. 8 One of MAMBO SEAFOOD®’s most famous and well known dishes is its Mambo Rice, a fried rice dish containing shrimp, chicken or pork, which is an atypical menu item for a Latin seafood restaurant as it is quite similar to an Asian fried rice dish. Unable to develop its own, unique menu item, Defendants have copied MAMBO SEAFOOD®’s


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24. Upon information and belief, before opening the SAMBA SEAFOOD restaurant,

Defendants or their agents visited at least one of the MAMBO SEAFOOD® restaurants to gain

information about MAMBO SEAFOOD®’s signage, menus, and operations, and thereafter sought

to infringe upon Mambo’s trademarks and copyrights by, inter alia, creating and using marks

confusingly similar to the MAMBO SEAFOOD® mark displayed on MAMBO SEAFOOD®

restaurants’ signage and menus.

25. Defendants egregiously copied Mambo’s logo and signage with the apparent intent

of misleading and confusing customers and to deceive them by creating a false appearance of an

affiliation, connection, or association with MAMBO SEAFOOD®. Defendants have infringed on

Mambo’s marks to inappropriately indicate a connection between Defendants and MAMBO

SEAFOOD®. Defendants’ deliberate efforts to create “initial-interest confusion” in the marketplace

give Defendants unmerited credibility during the early stages of their business and can cause

consumers not to consider MAMBO SEAFOOD® even after the confusion dissipates.

26. The MAMBO SEAFOOD® word mark registration protects against use of any

confusingly similar mark, regardless of color or font. The MAMBO® “dancing letters” word and

design mark registration protects against any confusingly similar mark, regardless of color (i.e., the

registration is not limited to any particular color or colors). Each letter of the word “MAMBO” is

offset and tilted either to the left or the right to give the appearance that the letters are dancing.9

27. The MAMBO SEAFOOD® word and design registration includes the word

“MAMBO” in dancing letters with each of the letters being red and having a vertical, wavy, white

line. The letters comprising the word “SEAFOOD” appear in yellow directly below the term

Mambo Rice by offering a fried rice dish containing shrimp, chicken, or ham, which is identified as “Signature Rice” on the SAMBA SEAFOOD menu. See Exhibit J, second page. 9 Mambo has attached representative copies of its MAMBO SEAFOOD® mark as Exhibit F.


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“MAMBO” in dancing letters. A blue background appears behind the word “SEAFOOD” and

which takes the shape of a horizontally elongated rectangle with hemispherical ends and is

encircled by a light pastel blue border.

28. Despite limitless other marks Defendants could have chosen, Defendants wrongfully

appropriated a mark confusingly similar to Mambo’s MAMBO® and MAMBO SEAFOOD® marks

in name and design without Mambo’s permission. Defendants’ mark is comprised of the word

“SAMBA,” a word that looks and sounds confusingly similar to “MAMBO,” as the three middle

letters of both words are A-M-B.10 The letters in the word “SAMBA” appear in red, as do the red

“MAMBO” letters in the MAMBO SEAFOOD® mark. The similarities between Mambo’s

MAMBO® and MAMBO SEAFOOD® marks and Defendants’ infringing business name and logo

are not limited merely to red lettering.

29. In one version of Defendants’ infringing business practices, the word “SAMBA”

appears in red and is presented on a yellow background, while in another version the word

“SAMBA” appears in red and is outlined in yellow and presented on a red background. In both

versions of Defendants’ logos, the word “SEAFOOD” appears directly below the word “SAMBA”

with the letters comprising the word “SEAFOOD” appearing in white. Just as the word

“SEAFOOD” in the MAMBO SEAFOOD® mark, the word “SEAFOOD” in Defendants’ logo is

presented on a blue background and takes the shape of a horizontally elongated rectangle with

hemispherical ends. And, similar to the letters in the word “MAMBO” in the MAMBO

SEAFOOD® mark, each of the letters in the word “SAMBA” in Defendants’ logo is tilted to the left

or right to give the appearance the letters are dancing.

10 Not only are the words MAMBO and SAMBA confusingly similar in sound and appearance, it will not be lost on the Court that Defendants copied Mambo’s intellectual property and selected a business name that is a similar Latin-inspired dance style.


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30. Defendants have even copied Mambo’s marks down to the direction of the tilt of

each letter. In addition to tilting its letters from side-to-side, Defendants have copied Mambo’s

marks so identically that Defendants’ individual letters tilt in the same direction as Mambo’s

individual lettering. For example, the first letter in Defendants’ business name leans to the left, as

does Mambo’s. The second letter leans to the right. The third letter leans to the left. The fourth

letter leans to the right. And the fifth and final letter leans to the right as well.11

31. The similarities between Defendants’ signage and Mambo’s protectable MAMBO®

and MAMBO SEAFOOD® marks do not end there. The sides of Mambo’s MAMBO® and

MAMBO SEAFOOD® marks are angled and not vertically straight. From bottom to top, the sides

of Mambo’s MAMBO® and MAMBO SEAFOOD® marks extend outward, to the right on the right-

hand side and to the left on the left-hand side. Defendants’ SAMBA SEAFOOD sign is identical.

Also, the top of Mambo’s MAMBO® and MAMBO SEAFOOD® marks is wavy and bordered in

blue. Defendants’ SAMBA SEAFOOD sign also has a blue border and the top is wavy. Mambo

attaches representative copies of Defendants’ logos that infringe on Mambo’s MAMBO® and

MAMBO SEAFOOD® marks as Exhibit K. A comparison is set forth here for ease of reference:

11 Defendants intentionally copied Mambo’s marks. The lettering arrangement cannot reasonably be considered happenstance. Mambo’s first four letters alternate leaning to the left and then the right − left, right, left, right. But the fifth and final letter in Mambo’s mark does not alternate back to leaning to the left as one may expect in an ordinary, repeatable sequence. Instead, the fifth letter duplicates the lean of the fourth letter and leans to the right. Defendants’ sign is identical − left, right, left, right, right.


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32. Defendants also infringe upon Mambo’s VUELVE a la VIDA® mark by offering a

menu item using Mambo’s trademarked name.12

33. Defendants have set up and conducted their business in a manner that is

intentionally calculated to deceive and has deceived the public as to the origin of Defendants’

SAMBA SEAFOOD restaurant and the products sold in their restaurant. This is demonstrated by,

inter alia, (i) use of logos, signage, and business materials that are confusingly similar to Mambo’s

MAMBO® and MAMBO SEAFOOD® trademarks in terms of both words and design,

(ii) establishing a SAMBA SEAFOOD restaurant in close geographic proximity to a MAMBO

SEAFOOD® restaurant, (iii) offering a menu item with the exact same name as Mambo’s registered

mark, VUELVE a la VIDA®, (iv) offering one of Mambo’s most popular menu items, i.e., fried

rice, which is an atypical menu item for a seafood establishment, and other conduct.13 The

deception has misled and is misleading numerous persons into patronizing Defendants’ SAMBA

SEAFOOD restaurant in the belief that it is associated with MAMBO SEAFOOD®. As a result, the

12 Mambo has attached a copy of Defendants’ menu as Exhibit J, which lists Vuelve A La Vida under its “Appetizers • Cold Cocktails • Salads” section. Mambo inserts below an excerpt from Defendants’ menu highlighting Defendants’ unauthorized use of Mambo’s mark. 13 As explained below, Defendants’ employees are affirmatively misrepresenting the existence of a connection between Defendants’ infringing establishment and MAMBO SEAFOOD® restaurants.


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goodwill attached to the MAMBO SEAFOOD® restaurants has been and is being seriously injured.

Mambo has been and is being damaged due to the business and profits that would otherwise belong

to Mambo from its MAMBO SEAFOOD® restaurants being diverted to Defendants and their

SAMBA SEAFOOD restaurant.

34. Not only do Defendants’ logos, menus, and signage infringe upon Mambo’s

intellectual property rights and create a likelihood of customer confusion, Defendants’ employees

have affirmatively and falsely advertised Defendants’ business operations. Mambo’s

representatives have patronized the SAMBA SEAFOOD restaurant to gather information regarding

Defendants’ unlawful use of Mambo’s intellectual property. On at least one of these visits, a

SAMBA SEAFOOD employee told Mambo’s investigator that SAMBA SEAFOOD is “the

same as” MAMBO SEAFOOD®.

35. Mambo’s investigator also spoke to several SAMBA SEAFOOD patrons after they

exited Defendants’ restaurant. These conversations further reveal actual consumer confusion

between MAMBO SEAFOOD® and SAMBA SEAFOOD resulting from Defendants’ confusingly

similar logos, menus, signage, and, potentially, other affirmative misrepresentations Defendants’

employees are making to Defendants’ customers regarding a supposed affiliation with MAMBO

SEAFOOD®.

36. Defendants’ wrongful activities are willful for at least the following reasons:

a. Defendants chose a name and logo confusingly similar to Mambo’s MAMBO® and MAMBO SEAFOOD® marks even though the most rudimentary trademark search would have revealed Mambo’s federal registrations for the practically identical mark for identical types of products and services;

b. Defendants chose words to identify one of its seafood dishes that are the same words Mambo previously trademarked, VUELVE a la VIDA®, even though the most rudimentary trademark search would have revealed Mambo’s federal


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registration for VUELVE a la VIDA® for identical types of products and services;

c. A SAMBA SEAFOOD employee told Mambo’s private investigator that SAMBA SEAFOOD is the same as MAMBO SEAFOOD®; and

d. Defendants have continued to use their confusingly similar logo, “SAMBA SEAFOOD,” even after Mambo notified Defendants of Mambo’s prior rights to the MAMBO SEAFOOD® mark.

CAUSES OF ACTION

COUNT 1 – TRADEMARK INFRINGEMENT UNDER THE LANHAM ACT

37. The Lanham Act is designed to eliminate unfair competition methods and protect

businesses from the unjust erosion of their goodwill and reputation. The Lanham Act is intended to

stop unlawful business activities such as those Defendants have perpetuated with their SAMBA

SEAFOOD restaurant.

38. Mambo’s registered MAMBO® and MAMBO SEAFOOD® marks and the

Defendants’ logo, signage, menu, and advertisements are confusingly similar to one another in

sound, meaning, and appearance.

39. Mambo’s registered MAMBO® and MAMBO SEAFOOD® marks and the SAMBA

SEAFOOD depictions are used on or in connection with identical services, namely restaurant

services, and both restaurants serve food items that are similar or identical in name or ingredients.

40. Defendants also are using Mambo’s registered VUELVE a la VIDA® mark on

Defendants’ menu.

41. Mambo and Defendants are using the MAMBO®, MAMBO SEAFOOD® and

VUELVE a la VIDA® marks in commerce in connection with their restaurant services. Mambo

uses and displays its marks in the sale and advertising of goods and services in commerce.


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42. Mambo’s registered trademarks are legally protectable, and Mambo has the

exclusive right to use the marks in commerce. Further, Mambo’s exclusive right to use its marks in

commerce is conclusive because Mambo registered its marks, has continuously used its marks in

commerce for more than five consecutive years, and for each registration has filed the requisite

Declaration of Use pursuant to 15 U.S.C. §1058 (“Section 8”), Declaration of Incontestability

pursuant to 15 U.S.C. §1065 (“Section 15”), and paid the requisite fees with the USPTO.

43. Defendants’ unauthorized use of Mambo’s MAMBO®, MAMBO SEAFOOD® and

VUELVE a la VIDA® marks falsely indicates to consumers that Defendants’ food products and

services originate from, are approved by, are sponsored by, are licensed by, or are affiliated with

MAMBO SEAFOOD® restaurants or are otherwise associated with the food products and services

sold in MAMBO SEAFOOD® restaurants.

44. Defendants’ unauthorized use of Mambo’s marks in the manner described above is

likely to cause confusion, to cause mistake, or to deceive customers and potential customers of the

parties by suggesting some affiliation, connection, or association between SAMBA SEAFOOD and

MAMBO SEAFOOD® when there is no such connection.

45. Defendants’ actions, as described above, constitute trademark infringement in

violation of the Lanham Act, 15 U.S.C. §1114(1).

46. Defendants’ unauthorized use of the MAMBO®, MAMBO SEAFOOD® and

VUELVE a la VIDA® marks has been willful and undertaken with constructive and actual

knowledge of Mambo’s ownership of the registered marks.

COUNT 2 – UNFAIR COMPETITION UNDER THE LANHAM ACT

47. Defendants have, in connection with goods and services, used in commerce words,

terms, names, symbols, devices, false designation of origin, false or misleading description of fact,


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or false or misleading representations of fact that are likely to cause confusion, mistake, or deceive

as to Defendants’ affiliation, connection, or association with MAMBO SEAFOOD® restaurants or

to the origin, sponsorship, or approval of Defendants’ goods or services by MAMBO SEAFOOD®

restaurants.

48. Defendants also have, in connection with goods and services, used in commerce

words, terms, names, symbols, devices, false designation of origin, false or misleading description

of fact, or false or misleading representations of fact in advertisements or promotion to

misrepresent the nature, characteristics, qualities, or geographic origin of Defendants’ goods,

services, or commercial activities.

49. Defendants’ actions constitute unfair competition in violation of the Lanham Act, 15

U.S.C. §1125(a) for which Mambo has been damaged. Accordingly, Mambo seeks recovery under

15 U.S.C. §1117 of Defendants’ profits, damages sustained by Mambo, the costs of this action, and

any other damages permitted by law.

COUNT 3 – COPYRIGHT INFRINGEMENT

50. Co-plaintiff Mambo Seafood #1, Inc. created original, graphic artwork entitled

Mambo Seafood Menu #1. MAMBO SEAFOOD® signage, menus and corresponding business

materials all incorporate and/or are derivative works of that artwork. This graphic artwork is

copyrightable subject matter under the laws of the United States.

51. Mambo Seafood #1, Inc. complied in all respects with the Copyright Act, 17 U.S.C.

§101 et seq., and with all other laws governing copyrights. Accordingly, the Register of

Copyrights issued a certificate of registration number VA 1-166-438 to Mambo Seafood #1, Inc.

Plaintiffs Mambo Marks, LLC and Mambo Seafood #1, Inc. are related companies, and intellectual

property owned by either is used by all related companies.


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52. Defendants have infringed upon Mambo’s copyright by publicly displaying graphics

and artwork copied largely and substantially from Mambo’s copyrighted graphics and artwork, a

right reserved exclusively to Mambo under 17 U.S.C. §106(1) and/or Defendants have infringed

upon Mambo’s exclusive rights to make derivative work under 17 U.S.C. §106(5).14

53. Defendants willfully infringed upon Mambo’s copyrighted work, and are liable to

Mambo for infringement under 17 U.S.C. §501.

54. Mambo notified Defendants that they had infringed, and are infringing upon,

Mambo’s copyright, but Defendants have continued to infringe upon the copyright.

REQUEST FOR PRELIMINARY AND PERMANENT INJUNCTIVE RELIEF

55. Mambo seeks to enjoin Defendants and their agents and representatives from using

Mambo’s MAMBO®, MAMBO SEAFOOD® and VUELVE a la VIDA® marks or any confusingly

similarly marks because Defendants’ activity infringes upon Mambo’s marks, including both the

words and designs. Examples of the confusingly similar marks Mambo seeks to enjoin Defendants

and their agents and representatives from using include the sign displayed close to the street curb,

next to the driveway at the SAMBA SEAFOOD restaurant and the confusingly similar signage

attached to the exterior of the SAMBA SEAFOOD restaurant.15

56. Mambo also seeks to enjoin Defendants and their agents and representatives from

publicly displaying any graphics or artwork substantially similar to Mambo’s copyrighted graphics

and artwork, such as the infringing graphic artwork displayed on the sign located close to the street

curb, next to the driveway on the grounds of the SAMBA SEAFOOD restaurant, as well as the

14 Mambo has attached copies of its copyrighted material as Exhibit F, and copies of Defendants’ infringing material as Exhibit K. 15 Photos of these confusingly similar marks Mambo seeks to enjoin Defendants and their agents and representatives from using are attached hereto as Exhibit K.


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infringing graphic artwork affixed to the exterior of the SAMBA SEAFOOD restaurant because

this activity infringes upon Mambo’s copyrighted graphic artwork. Photos of Defendants’

substantially similar graphic artwork Mambo seeks to enjoin Defendants and their agents and

representatives from publicly displaying are attached hereto as Exhibit K. Mambo further seeks to

enjoin Defendants from using Mambo’s registered marks and copyrighted graphic artwork inside

Defendants’ restaurant, on Defendants’ menus, and in any other business advertisements.

57. A party who seeks a preliminary injunction must establish four elements: (i) a

substantial likelihood of success on the merits, (ii) a substantial threat of irreparable injury if the

injunction is not issued, (iii) the threatened injury, if the injunction is denied, outweighs any harm

that will result if the injunction is granted, and (iv) the grant of an injunction will not disserve the

public interest. Texans for Free Enter. v. Tex. Ethics Comm’n, 732 F.3d 535, 536-37 (5th Cir.

2013). Mambo can establish each of these elements.

Mambo has a substantial likelihood of success on the merits

58. There is a substantial likelihood Mambo will prevail on the merits.

59. Mambo owns legally protectable marks, and Mambo can show Defendants are

infringing on Mambo’s marks. Defendants are using in commerce a reproduction, counterfeit,

copy, or imitation of Mambo’s marks without Mambo’s permission. Defendants’ use is in

connection with Defendants’ sale, offering for sale, distribution, and advertising of its goods and

services. Moreover, Defendants’ infringement is likely to cause confusion, mistake, or deception.

60. Defendants are using Mambo’s identical VUELVE a la VIDA® mark. A strong risk

of consumer confusion arises when an infringer is using a plaintiff’s exact mark. Defendants also

are using confusingly similar signage, logos, menus, and business materials compared to Mambo’s

MAMBO® and MAMBO SEAFOOD® marks and copyright protected works.


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61. Mambo’s marks and copyrighted works are strong. Mambo’s marks and copyright

protectable works are registered with the USPTO and the United States Copyright Office,

respectively. Mambo’s marks and copyrighted material are well known in and around Texas.

62. Defendants’ images, logos, menus, and signage are identical to Mambo’s VUELVE

a la VIDA® mark and strikingly similar to Mambo’s MAMBO® and MAMBO SEAFOOD® marks

and copyright protected works. Defendants copied Mambo’s marks and copyright protected works

down to the smallest detail, including positioning the letters on its sign to lean the same directions

as the letters in Mambo’s marks and copyright protected works.

63. The similarity of the products and the identity of the consumers also cause

confusion because MAMBO SEAFOOD® and SAMBA SEAFOOD are restaurants that serve

American and Latin seafood dishes to the same consumer base. Defendants have copied Mambo’s

menu items, including atypical dishes similar restaurants ordinarily do not serve. Mambo and

Defendants service the same customers in a close geographic proximity. These facts heighten the

likelihood for confusion.

64. While evidence of actual confusion need not be present to find a likelihood of

confusion, Mambo has some evidence that SAMBA SEAFOOD customers are actually confused

about the origin, association, and connection of SAMBA SEAFOOD to MAMBO SEAFOOD®

restaurants. However, there is no association or connection between the two restaurants. Actual

confusion can be supported by a single instance of actual confusion. Mambo may rely on

anecdotal instances of customer confusion or customer surveys. Further, while no proof of actual

confusion is necessary, an almost overwhelming amount of proof is needed for Defendants to

refute evidence of actual confusion.


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65. Because Mambo’s marks and copyright are legally protectable and Defendants’

business practices are likely to cause confusion, Mambo can show a substantial likelihood of

success on the merits of its claims.

There is a substantial threat of irreparable injury if injunction is not issued

66. If the Court does not grant a preliminary injunction, Defendants will continue their

activities that infringe upon Mambo’s trademarks and copyright and irreparably and incalculably

impair Mambo’s goodwill and legitimate use of its own marks and copyright.

67. Mambo will suffer irreparable injury if the Court does not enjoin Defendants from:

using marks that are confusingly similar to Mambo’s MAMBO® and MAMBO SEAFOOD®

marks, which includes both words and design, publicly displaying any graphic artwork

substantially similar to or derived from Mambo’s copyrighted graphic artwork, using Mambo’s

identical VUELVE a la VIDA® mark, and falsely representing to customers or advertising that

Defendants’ restaurant is the same as, or affiliated with, MAMBO SEAFOOD®.

68. The requisite injury for an injunction against infringement is presumed when one

proves a likelihood of confusion. Money damages are inadequate to compensate a trademark or

copyright holder for an infringer’s continuing acts, including Defendants’ use of Mambo’s

intellectual property to identify and market Defendants’ brand.

69. Irreparable harm results when the holder of a trademark cannot control the quality of

the infringer’s goods and services. Mambo will suffer irreparable harm in the form of loss of

goodwill and damage to its reputation, both of which can be traced to loss of control over

Defendants’ goods and services. This loss of control constitutes immediate irreparable harm.

70. Because a likelihood of confusion exists, Mambo’s inability to control the quality of

Defendants’ goods or services constitutes an immediate and irreparable injury, regardless of the


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actual quality of Defendants’ goods or services. Here though, actual customer reviews from those

who have patronized the SAMBA SEAFOOD restaurant reveal the poor quality associated with

Defendants’ restaurant. A customer’s bad experience at SAMBA SEAFOOD may influence the

customer never to visit a MAMBO SEAFOOD® restaurant because of his poor experience at

SAMBA SEAFOOD.

71. Various SAMBA SEAFOOD customers have dined at the restaurant and felt

compelled to notify the public of the poor food and service at Defendants’ restaurant. For example,

customers have posted the following comments after eating at SAMBA SEAFOOD:

“Horrible!! I don’t recommend this place at all!!! Bad service and raw food[.]”

“The food is horrible.”

“Save your money….I sent my meal back and didn’t order anything else…I wouldn’t recommend eating here and we won’t be back.”

“Not so good. . . . Save your stomach And money, don’t go.”

“Not very good. Fried Fish was pretty gross. . . . Wouldn’t be a place I’d try again”!

“The food really sucks”

Other customer reviews identify further troubling conduct ranging from poor sanitary practices,

bad customer service, and flies entering the dining area from an open kitchen door.

72. Because Defendants’ signage, menu, and advertisement create a likelihood of

confusion, irreparable harm is presumed. Nevertheless, the harm to Mambo’s goodwill is seen

through the poor customer reviews SAMBA SEAFOOD has received. Mambo faces a substantial

threat of irreparable harm if the Court does not issue an injunction.

Injury to Mambo if an injunction is not granted outweighs harm to Defendants

73. Defendants will not suffer undue hardship or loss as a result of the issuance of a

preliminary injunction.


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74. When, as here, defendants improperly use a plaintiff’s trademark, the threatened

harm to the plaintiff outweighs the threatened harm to the defendants if the injunction is not

granted.

Granting the injunction will not disserve the public interest 75. Issuing the preliminary injunction will not adversely affect the public interest.

76. The public interest always is served by requiring compliance with Congressional

statutes such as the Lanham Act and by enjoining the use of infringing marks. Protecting Mambo

in this case from an infringing, junior competitor and preventing consumer confusion in the

marketplace does not disserve the public’s interest.

77. The public interest promotes protecting valuable trademarks and service marks in a

capital-based economy that rewards success through competition. The public also has interest in

not being deceived into believing it is dining at a Mambo or Mambo-affiliated restaurant that is

using Mambo’s marks without authorization.

78. Mambo asks the Court to set this request for preliminary injunction for hearing at

the earliest possible time and, after hearing the request, to issue a preliminary injunction against

Defendants.

SEIZURE OF ARTICLES

79. Defendants’ logo, signage, menu, and other business and advertising materials are

substantially similar to Mambo’s marks and copyrighted graphic artwork incorporated into

Mambo’s signage, menus, and other business materials. Mambo asks the Court to issue a writ of

seizure against Defendants’ infringing material. See 17 U.S.C. §503.

80. Mambo will suffer irreparable injury if the Court does not order the seizure of

Defendants’ infringing articles because Defendants are in violation of Mambo’s copyrighted works,


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and Defendants’ continued use causes consumer confusion and tarnishes Mambo’s and its affiliate

companies’ goodwill.

81. Mambo is prepared to prosecute this suit promptly.

82. Mambo is prepared to return Defendants’ logo, signage, menu, and other business

and advertising materials if Defendants are found not to be infringing on Mambo’s intellectual

property.

83. Mambo is prepared to post a reasonable bond, if necessary.

DAMAGES

84. As a direct and proximate result of Defendants’ conduct, Mambo suffered the

following damages:

a. Actual damages for trademark infringement;

b. Actual damages for unfair competition;

c. Actual damages for copyright infringement;

d. Lost profits for copyright infringement;

e. Statutory damages for copyright infringement;

f. Statutory damages for willful copyright infringement; and

g. Enhanced damages for willful trademark infringement and/or willful unfair competition.

85. Defendants knew their unauthorized use of marks confusingly similar to Mambo’s

would result in a benefit to Defendants.

86. Defendants’ unauthorized use of Mambo’s marks has unjustly enriched Defendants

at the expense of Mambo’s reputation and goodwill.

ATTORNEY FEES & COSTS

87. Mambo is entitled to an award of attorney fees and costs under 17 U.S.C. §505 as a

prevailing party.

88. Mambo is entitled to an award of attorney fees under 15 U.S.C. §1117(a).


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DEMAND FOR JURY TRIAL

89. Mambo demands a trial by jury on all triable issues.

PRAYER

For these reasons, Plaintiff Mambo asks for judgment against Defendants, jointly and

severally, for the following:

a. Defendants, their officers, agents, servants, employees, and attorneys, and all persons in active concert or participation with any of them, be preliminarily and permanently enjoined from the following:

(1) Using the MAMBO® and MAMBO SEAFOOD® marks or any other confusingly similar mark in connection with the promotion, advertising, or offering of restaurant services;

(2) Using the VUELVE a la VIDA® mark or any other confusingly similar mark in connection with the promotion, advertising, or offering of restaurant services;

(3) Making any false representations or advertisements to customers or others that would create a false appearance of an affiliation, connection, or association with MAMBO SEAFOOD®;

(4) Using or incorporating Mambo’s copyrighted artwork and color schemes for Defendants’ signage, menus, and corresponding business materials;

(5) Competing unfairly with Mambo in any manner, including unlawfully adopting or infringing on Mambo’s MAMBO® and MAMBO SEAFOOD® marks or adopting or using any other marks or designations that are confusingly similar to Mambo’s MAMBO® and MAMBO SEAFOOD® marks; and

(6) Conspiring with, aiding, assisting, or abetting any other person or entity in engaging in any of the enjoined activities.

b. Defendants, their officers, agents, servants, employees, and attorneys, and all

persons in active concert or participation with any of them, deliver for destruction, or show proof of destruction of, all products, labels, signs, menus, prints, packages, wrappers, receptacles, and advertisements, and any other materials in their possession or control that depict or reference Mambo’s MAMBO® and MAMBO SEAFOOD® marks, VUELVE a la VIDA® mark, or any other confusingly or substantially similar marks, and all materials or articles used for making or reproducing the same, as provided by 15 U.S.C. §1118.


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c. Defendants file with the Court and serve on Mambo, within 30 days after the entry and service on Defendants of an injunction, a report in writing and under oath stating in detail the manner and form in which Defendants have complied with the provisions of subparagraphs (a) and (b) above.

d. Mambo recover all damages it has sustained as a result of Defendants’

trademark infringement and unfair competition. e. Mambo be awarded treble damages under 15 U.S.C. §1117(b). f. An accounting be directed to determine Defendants’ profits resulting from

their infringement and unfair competition and that the profits be paid over to Mambo, increased as the Court determines is appropriate to the circumstances of this case.

g. Mambo recover from Defendants Mambo’s actual damages, plus the amount

of Defendants’ profits attributable to Defendants’ copyright infringement, or in the alternative, Defendants pay Mambo statutory damages, as authorized by 17 U.S.C. §504(c).

h. Defendants and their agents and representatives be enjoined during and after

this suit from infringing Mambo’s copyright in any manner. i. Defendants pay Mambo additional damages for willfully infringing upon

Mambo’s copyright, as authorized by 17 U.S.C. §504(c)(2). j. The Court declare this case an exceptional case and award Mambo its

reasonable attorney fees for prosecuting this suit under 15 U.S.C. §1117(a). k. Mambo recover its costs of this suit and prejudgment and postjudgment

interest. l. Mambo have all other relief the Court deems appropriate.

Respectfully submitted,

By: /s/ William S. Helfand William S. Helfand Attorney-in-Charge for Plaintiffs State Bar No. 09388250 SDTX Bar No. 8791 1200 Smith Street, Suite 1400 Houston, Texas 77002 713-654-9630 713-658-2553 (Fax) [email protected]


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OF COUNSEL: CHAMBERLAIN, HRDLICKA, WHITE, WILLIAMS & AUGHTRY 1200 Smith Street, Suite 1400 Houston, Texas 77002 713-654-9630 713-658-2553 (Fax) 1989641.6 009672.000011


Mambo Marks v. Samba Food - Mambo Seafood.pdf

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