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`Case 8:22-cv-00481-DKC Document 1 Filed 02/28/22 Page 1 of 13
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MARYLAND
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`Civil Action No. 8:22-CV-00481
`
`
`COMPLAINT
`
`
`JURY TRIAL DEMANDED
`
`
`KCP FOOD (U.S.), INC.,
`30 Broad Street, 14th Floor
`New York, New York 10004
`
` Plaintiff,
`
` v.
`
`INTERNATIONAL RESTAURANT
`MANAGEMENT GROUP, INC.,
`4531 Ponce De Leon Boulevard, Suite 300
`Coral Gables, Florida 33146
`
`Serve: Hing-Yu Yeung
` 4531 Ponce De Leon Blvd., Ste 300
` Coral Gables, FL 33146
`
`and JOHN DOES 1-5,
`
` Defendants.
`
`
`Plaintiff KCP Food (U.S.), Inc. (“Plaintiff”), by and through its attorneys, Doner Law,
`
`PLC, for its complaint against International Restaurant Management Group, Inc. and John Does
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`1-5 (individually and collectively, “Defendants”) alleges as follows:
`
`1.
`
`This is an action based on Defendants’ infringement of Plaintiff’s longstanding,
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`famous and incontestable SARKU trademarks for use in connection with restaurant services,
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`particularly Japanese-style quick service restaurants. Specifically, Defendants are in the process of
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`opening a “Sarku Hana” Japanese restaurant in the food court at the Westfield Montgomery mall,
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`just a few feet away from Plaintiff’s licensee’s SARKU JAPAN restaurant, and in the very spot
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`that, until last year, a SARKU JAPAN SUSHI BAR used to be.
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`1
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`Case 8:22-cv-00481-DKC Document 1 Filed 02/28/22 Page 2 of 13
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`THE PARTIES
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`2.
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`Plaintiff is a corporation organized and existing under the laws of the State of
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`Delaware with a principal place of business located at 30 Broad Street, 14th Floor, New York,
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`New York 10004.
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`3.
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`Upon information and belief, defendant International Restaurant Management
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`Group, Inc. (“IRMG”) is a corporation formed under the laws of the State of Florida with a place
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`of business at 4531 Ponce De Leon Boulevard, Ste. 300, Coral Gables, Florida 33146.
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`4.
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`Upon information and belief, John Does 1-5 are subsidiaries, related entities,
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`affiliates or franchisees of IRMG, whose identities are currently unknown, which own, are
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`responsible for the construction and will operate the Sarku Hana restaurant that is the subject of
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`this action.
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`JURISDICTION AND VENUE
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`5.
`
`This is a civil action for trademark infringement and unfair competition arising
`
`under the Lanham Act, Title 15 of the United States Code and the law of the State of Maryland.
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`The Court has subject matter jurisdiction over the action pursuant to 28 U.S.C § 1331 and 28
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`U.S.C. §1338(a), as it involves substantial claims arising under the Lanham Act. The Court has
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`supplemental jurisdiction over the related state law claims pursuant to 28 U.S.C. § 1338(b) and 28
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`U.S.C. § 1367.
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`6.
`
`Personal jurisdiction is proper as Defendants are engaging in trademark
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`infringement and unfair competition and doing business in the State of Maryland.
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`7.
`
`Venue is proper in this District under 28 U.S.C. § 1391(d) in that IRMG is
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`committing the acts complained of herein in this District.
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`2
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`Case 8:22-cv-00481-DKC Document 1 Filed 02/28/22 Page 3 of 13
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`PLAINTIFF AND ITS BUSINESS
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`8.
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`Plaintiff, among other things, owns all of the intellectual property used in
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`connection with SARKU JAPAN restaurants.
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`9.
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`SARKU JAPAN is a national chain of Japanese-style quick service restaurants that
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`is known for its fresh ingredients and high-quality food that is prepared before the eyes of
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`consumers. The menus at SARKU JAPAN and SARKU JAPAN SUSHI BAR restaurants feature
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`teriyaki, tempura, bento, sushi and other Japanese-style dishes.
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`10.
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`Since 1987, Plaintiff, its predecessor and its licensees (individually and
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`collectively, “Sarku”) have continuously used the SARKU and SARKU JAPAN trademarks
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`(individually and collectively, the “SARKU Marks”) in connection with restaurant services and
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`other services throughout the United States.
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`11.
`
`The word SARKU is a fanciful term originating from and developed by Sarku
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`which has no meaning in any language.
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`12.
`
`Presently, there are about 180 SARKU JAPAN and SARKU JAPAN SUSHI BAR
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`restaurants in the United States of which 14 are located in Maryland including a SARKU JAPAN
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`restaurant located in the food court of the Westfield Montgomery mall located at 7101 Democracy
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`Boulevard, Bethesda, Maryland (the “Westfield Montgomery”). This restaurant has been open
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`for over 21 years.
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`13.
`
`Sarku owns, among other trademark registrations:
`
`
`
`U.S. Trademark Registration No. 3,328,833 for SARKU for restaurant
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`services and franchising services in the field of restaurants (“the ’833
`
`Registration”);
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`3
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`Case 8:22-cv-00481-DKC Document 1 Filed 02/28/22 Page 4 of 13
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`U.S. Trademark Registration No. 3,079,377 for SARKU JAPAN SUSHI
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`BAR for restaurant services; and
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`U.S. Trademark Registration No. 4,527,012 for SARKU JAPAN and
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`Design for restaurant services and franchising, namely, offering business
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`management assistance in the establishment and/or operation of restaurants
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`(collectively, the “SARKU Registrations”).
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`True and correct copies of the SARKU Registrations are attached hereto as Exhibit 1.
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`14.
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`15.
`
`The SARKU Registrations are subsisting and incontestable.
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`Over the years, Sarku has spent hundreds of thousands of dollars advertising and
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`promoting SARKU JAPAN and SARKU JAPAN SUSHI BAR restaurants, which have generated
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`hundreds of millions of dollars in sales.
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`16.
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`All SARKU JAPAN and SARKU JAPAN SUSHI BAR restaurants are operated to
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`exacting food quality, food safety and customer service standards. This is done in order to ensure
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`a pleasurable customer service experience and to prevent the chances of foodborne illness, i.e.,
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`food poisoning.
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`17. As a result of Sarku’s long-term use of the SARKU Marks in connection with
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`restaurant services, the SARKU Marks signify to consumers that restaurant services rendered
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`under by SARKU JAPAN and SARKU JAPAN SUSHI BAR are high-quality, quick service
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`restaurants operated to exacting standards. As a result, the Sarku Marks and the goodwill
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`associated therewith are of inestimable value to Sarku.
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`18.
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`As a result of the distinctiveness and widespread use and promotion throughout the
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`United States, the SARKU Marks are famous within the meaning of Section 43(c) of the Lanham
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`Act, 15 U.S.C. 1125(c), and became famous prior to the acts of the IRMG alleged herein.
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`4
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`Case 8:22-cv-00481-DKC Document 1 Filed 02/28/22 Page 5 of 13
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`DEFENDANTS AND THEIR ILLEGAL CONDUCT
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`19. Upon information and belief, Defendants operate a chain of Japanese fast-food
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`restaurants under the trademark SUKI HANA.
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`20. According to IRMG’s website, IRMG currently operates approximately 15 SUKI
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`HANA branded restaurants in the United States and plans to open about a dozen more.
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`21. Upon information and belief, since early 2022, Defendants have been in the process
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`of opening a quick service restaurant under the name “Sarku Hana” at the Westfield Montgomery
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`located at spot FC-19 in that mall’s food court (the “Montgomery Mall Location”). True and
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`correct copies of photographs of Defendants’ restaurant at the Montgomery Mall Location (the
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`“Infringing Restaurant”) are reproduced below:
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`
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`
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`22. Until June 30, 2021, Sarku had a SARKU JAPAN SUSHI BAR restaurant for over
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`17 at FC-19 in the food court of the Westfield Montgomery, in other words, the exact same spot
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`at which Defendants are opening the Infringing Restaurant. .
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`23. Once the Infringing Restaurant opens, Plaintiff’s SARKU JAPAN and Defendants’
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`SARKU HANA restaurants will both be located and doing business in the exact same food court
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`of the Montgomery Mall, in close proximity with each other and, based on the signage placed at
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`the Infringing Restaurant, selling the same or very similar menu items.
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`5
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`Case 8:22-cv-00481-DKC Document 1 Filed 02/28/22 Page 6 of 13
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`24. Upon information and belief, at all relevant times, Defendants have known of the
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`SARKU Restaurants and the SARKU Marks.
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`25. At no time have Defendants been authorized to use the SARKU Marks.
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`26.
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`Sarku has no control over the Infringing Restaurant’s food quality, customer
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`service or food safety standards.
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`27.
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`If there are incidence of poor customer service, poor quality food or an outbreak of
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`food poisoning at the Infringing Restaurant, there is a good chance that the outbreak will be
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`publicized on social media and in the press.
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`28.
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`Sarku has already received a press inquiry asking about Sarku’s new “Sarku Hana”
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`restaurant at the Montgomery Mall.
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`29.
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`Upon information and belief, Defendants’ acts are willful with the deliberate intent
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`to trade on the goodwill of Sarku’s trademark rights, cause confusion and deception in the
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`marketplace, and divert potential sales of Sarku’s restaurant services to Defendants.
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`30.
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`Defendants’ acts are causing, and unless restrained, will continue to cause damage
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`and immediate irreparable harm to Sarku and to its valuable reputation and goodwill with the
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`consuming public for which Sarku has no adequate remedy at law.
`
`FIRST CAUSE OF ACTION
`(TRADEMARK INFRINGEMENT UNDER 15 U.S.C. § 1114)
`
`Plaintiff repeats and realleges the allegations of Paragraphs 1-30 of the Complaint
`
`31.
`
`as if fully set forth herein.
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`32.
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`This claim arises under the provisions of the Trademark Act of 1946, 15 U.S.C. §
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`1051 et seq., particularly under 15 U.S.C. § 1114(1), and alleges the infringement of a registered
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`trademark.
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`33.
`
`Plaintiff is the owner of the SARKU Registrations, which covers restaurant
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`6
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`Case 8:22-cv-00481-DKC Document 1 Filed 02/28/22 Page 7 of 13
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`services.
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`34.
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`Defendants’ unauthorized use of the SARKU Marks in connection with services
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`that are identical or nearly identical to the services covered by the SARKU Registrations is likely
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`to cause confusion, mistake and deception.
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`35.
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`The activities of Defendants complained of herein constitute willful and intentional
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`infringement of Plaintiff’s registered SARKU Marks, as such activities have the effect of creating
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`confusion, mistake and deception. Upon information and belief, these activities have continued
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`despite Defendants’ knowledge that such activities are in direct contravention of Sarku’s rights.
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`36.
`
`Defendants has willfully infringed Sarku’s registered SARKU Marks by
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`advertising and promoting services that are identical or nearly identical to the restaurant services
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`provided by Sarku under the SARKU Marks in interstate commerce in this District and elsewhere.
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`This use is without permission or authority of Sarku, and such use has been and continues to be in
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`a manner that is likely to cause confusion, mistake and to deceive.
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`37.
`
`The aforesaid and continuing acts of Defendants infringe Sarku’s registered
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`SARKU Marks in violation of 15 U.S.C. §1114(1). Said continuing violation has caused, is
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`causing and, unless enjoined, will continue to cause irreparable harm and damage to Plaintiff and
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`its business, reputation and goodwill and have caused Plaintiff to suffer monetary damages in an
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`amount to be determined at trial.
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`SECOND CAUSE OF ACTION
`(UNFAIR COMPETITION UNDER 17 U.S.C. § 1125(a))
`
`Plaintiff repeats and realleges the allegations of Paragraphs 1-37 of the Complaint
`
`38.
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`as if fully set forth herein.
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`7
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`Case 8:22-cv-00481-DKC Document 1 Filed 02/28/22 Page 8 of 13
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`39.
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`This claim arises under the provisions of the Trademark Act of 1946, 15 U.S.C. §
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`1051 et seq., particularly under 15 U.S.C. § 1125(a), and alleges the use in commerce of false
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`designations of origin, false descriptions, and false representations.
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`40.
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`Long prior to the acts of Defendants complained of herein, Sarku extensively used
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`its SARKU Marks in interstate commerce to identify its services and to distinguish them from the
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`services provided by others. By reason of the longstanding use fame of the SARKU Marks, these
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`trademarks indicate to consumers and the trade that restaurant services offered under and in
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`connection with the SARKU Marks are distributed by, originate from and are provided by Sarku.
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`41.
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`The SARKU Marks long ago acquired secondary meaning and are otherwise
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`strong.
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`42.
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`Upon information and belief, Defendants have used and continues to use the
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`SARKU Marks with the express intent to cause confusion and mistake, to deceive and mislead the
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`purchasing public, to trade upon the reputation of Sarku and to improperly appropriate Sarku’s
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`valuable trademark rights.
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`43.
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`Defendants’ use of the SARKU Marks is likely to deceive consumers as to the
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`origin, source, sponsorship, or affiliation of Defendants’ services, and is likely to cause consumers
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`to believe, contrary to fact, that Defendants’ services are sold, authorized, endorsed, or sponsored
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`by Sarku or that Defendants is in some way affiliated with or sponsored by Sarku or, in the
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`alternative, that Sarku’s services are sold, authorized, endorsed, or sponsored by Defendants or
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`that Sarku is in some way affiliated with or sponsored by Defendants.
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`44.
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`Defendants’ unauthorized use of the SARKU Marks constitutes a use in interstate
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`commerce of a false designation of origin and a false and misleading description and
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`8
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`Case 8:22-cv-00481-DKC Document 1 Filed 02/28/22 Page 9 of 13
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`representation in commerce, with knowledge of the falsity, which is likely to cause confusion,
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`mistake and deception all within the meaning and in violation of 15 U.S.C. § 1125(a).
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`45.
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`Defendants’ use of the SARKU Marks has caused and, unless enjoined, will
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`continue to cause irreparable harm and damage to Sarku and its business, reputation and goodwill
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`and has caused Plaintiff to suffer monetary damages in an amount not thus far determined.
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`46.
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` Plaintiff is entitled to, among other relief, injunctive relief and an award of actual
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`damages, Defendants’ profits, enhanced damages and profits, reasonable attorneys' fees, and costs
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`of the action under Sections 34 and 35 of the Lanham Act, 15 U.S.C. §§ 1116, 1117, together with
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`prejudgment and post-judgment interest.
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`THIRD CAUSE OF ACTION
`(DILUTION UNDER 17 U.S.C. § 1125(c))
`
` Plaintiff repeats and realleges the allegations of Paragraphs 1-46 of the Complaint
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`47.
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`as if fully set forth herein.
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`48.
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`This claim arises under the provisions of the Trademark Act of 1946, 15 U.S.C. §
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`1051 et seq., particularly under 15 U.S.C. § 1125(c), and alleges the dilution of a famous
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`trademark.
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`49.
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`The services offered and sold under the distinctive SARKU Marks enjoy
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`substantial sales and are widely recognized by the purchasing public to be of the highest quality,
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`offered and sold under superior merchandising and customer service conditions. As a result,
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`thereof, the SARKU Marks and the goodwill associated therewith are of inestimable value to
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`SARKU.
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`50.
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`By virtue of the wide renown acquired by the SARKU Marks, it has become
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`famous, and services offered under these marks are immediately identified by the purchasing
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`public with Sarku.
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`9
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`Case 8:22-cv-00481-DKC Document 1 Filed 02/28/22 Page 10 of 13
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`51.
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`Long after Sarku’s adoption and use of the SARKU Marks and long after that mark
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`became famous, Defendants began using and continues to use the SARKU Marks in such a manner
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`as to lessen the ability of the SARKU Marks to serve as an indicator of origin.
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`52.
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`The activities of Defendants complained of herein are willful and intentional and
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`have caused the dilution of the famous SARKU Marks.
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`53.
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`Defendants’ unauthorized use and continued unauthorized use of the SARKU
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`Marks has caused, is causing and, unless enjoined, will continue to cause irreparable harm and
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`damage to Plaintiff and its reputation and goodwill and has caused Plaintiff suffer monetary
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`damages in an amount not thus far determined.
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`54.
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`Unless restrained and enjoined, Defendants’ aforesaid acts will cause Plaintiff
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`irreparable harm and damage for which there is no adequate remedy at law.
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`FOURTH CAUSE OF ACTION
`(COMMON LAW UNFAIR COMPETITION)
`
`Plaintiff repeats and realleges the allegations contained in Paragraphs 1-54 of the
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`55.
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`Complaint as if fully set forth herein.
`
`56.
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`57.
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`This claim arises under the common law of this State relating to unfair competition.
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`As more fully set forth above, Defendants’ unauthorized use of the SARKU Marks
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`is nearly identical to the SARKU Marks. As a result, the purchasing public and the trade are likely
`
`to attribute to Sarku the authorized use of the SARKU Marks as a source of origin, authorization
`
`or sponsorship of Defendants’ services and therefore, to purchase Defendants’ goods and services
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`based on that mistaken belief.
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`58.
`
`Upon information and belief, Defendants intentionally appropriated the SARKU
`
`Marks and the goodwill associated therewith by using these marks with the intent of causing
`
`confusion, mistake, and deception as to the source of origin, relationship, sponsorship, or
`
`
`
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`10
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`Case 8:22-cv-00481-DKC Document 1 Filed 02/28/22 Page 11 of 13
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`
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`association of Defendants’ services, and with the intent to palm off its services as that of Sarku
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`and, as such, Defendants has engaged in unfair competition under the common law.
`
`59.
`
`Defendants’ use of the SARKU Marks has caused and, unless enjoined, will
`
`continue to cause irreparable harm and damage to Plaintiff and its business, reputation and
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`goodwill and has caused Plaintiff to suffer monetary damages in an amount not thus far
`
`determined.
`
`60.
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`By reason of such infringement, unfair competition and misappropriation and by
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`Defendants’ promotion of a restaurant services in connection with the SARKU Marks, Defendants
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`has caused, and unless restrained and enjoined will continue to cause, irreparable injury to
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`Plaintiff’s reputation and goodwill and otherwise damage Plaintiff in an amount not thus far
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`determined.
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`61.
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`Defendants’ conduct in intentionally misappropriating Plaintiff’s goodwill and
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`engaging in unfair competition was intended to wrongfully enrich Defendants and to deliberately
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`and willfully injure Plaintiff in wanton disregard of Plaintiff’s rights and Defendants’ legal
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`obligations. SARKU is therefore entitled to an award of punitive damages in an amount of no less
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`than $1,000,000.
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`62.
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`Unless restrained and enjoined, Defendants’ acts of infringement and unfair
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`competition will cause irreparable harm and damage Plaintiff for which there is no adequate
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`remedy at law.
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`PRAYER FOR RELIEF
`
`WHEREFORE,
`
`A.
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`Plaintiff hereby demands a judgment:
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`11
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`Case 8:22-cv-00481-DKC Document 1 Filed 02/28/22 Page 12 of 13
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`(1)
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`Issuing temporary, preliminary and permanent injunctions enjoining
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`Defendants from:
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`a.
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`using the SARKU Marks or any other similar name or trademark
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`that is confusingly similar to the SARKU Marks in connection with
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`the sale, offering for sale, promotion, advertising, marketing and
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`provision of restaurant services;
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`b.
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`conducting any activities in the United States which would
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`constitute unfair competition with the Plaintiff’s SARKU Marks or
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`a false designation of origin of Defendants’ goods and services as
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`emanating from or being associated or affiliated with, or sponsored
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`by, Sarku.
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`(2)
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`Awarding Plaintiff all monetary damages, pursuant to 15 U.S.C. § 1117,
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`including reasonable attorneys’ fees, and costs, which it has sustained as a
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`consequence of Defendants’ trademark infringement, unfair competition
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`and dilution in violation of 15 U.S.C. §§ 1114 and 1125(a) and (c);
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`(3)
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`Awarding Plaintiff enhanced damages, pursuant to 15 U.S.C. § 1117(a),
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`due to Defendants’ willful and intentional violation of Plaintiff’s rights
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`under the Lanham Act;
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`(4)
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`Awarding Plaintiff all monetary damages which it has sustained as a
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`consequence of Defendants’ violation of the Maryland common law of
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`unfair competition;
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`(5)
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`Awarding Plaintiff punitive damages in an amount of no less than
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`$1,000,000, based on Defendants’ deliberate and willful conduct; and
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`12
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`Case 8:22-cv-00481-DKC Document 1 Filed 02/28/22 Page 13 of 13
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`(6)
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`Granting such other and further relief as the court deems just and proper.
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`
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`JURY DEMAND
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`Plaintiff demands a trial by jury.
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`
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`/s/ Karen A. Doner
`Karen A. Doner (Bar No. 15065)
`Doner Law, PLC
`
`
`1750 Tysons Boulevard, Suite 1500
`Tysons Corner, Virginia 22102
`Tel: (703) 462-5471 / Fax: (703) 462-5437
`kdoner@donerlawplc.com
`Attorneys for Plaintiff
`
`
`
`Mark J. Rosenberg (pro hac vice
`application forthcoming)
`Sandra A. Hudak (pro hac vice application
`forthcoming)
`TARTER KRINSKY & DROGIN LLP
`1350 Broadway, 11th Floor
`New York, New York 10018
`Tel. (212) 216-8000/Fax ( 212)216-8001
`mrosenberg@tarterkrinsky.com
`shudak@tarterkrinsky.com
`Attorneys for Plaintiff
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