U.S. District Judge Noel Hillman/courtesy photo

A U.S. District Court Judge agrees with the owner of II Portico restaurant, formerly in Center City Philadelphia and now in Burlington that he didn't infringe on the trademark of a restaurant with the same name located in New York.

The New York owner owner, Fife and Drum Inc. claimed in a 2017 suit that it registered the "Il Portico" name in Tappan, New York, in 1990 and alleged that defendant Delbello Enterprises later copied.

The name means "The Porch" in English.

In The Fife and Drum v. Delbello Enterprises, U.S. Distsrict Judge Noel L. Hillman of the District of New Jersey, sitting in Camden, said Fife and Drum failed to prove that the identical names caused customer confusion and also ruled that the plaintiff waited too long to file suit.

"The Court finds that Plaintiff has failed to prove that Defendant infringed on its trademark," Hillman wrote in the opinion dated Nov. 1. "Even if Plaintiff were able to prove its claim of trademark infringement, injunctive relief would be barred by the equitable doctrine of laches."

"An accompanying Order will be entered directing Judgment in Defendant's favor and dismissing the action in full," Hillman wrote.

Cherry Hill solo Norman Elliot Lehrer represented Fife and Drum. Reached by phone Wednesday, he said he had no comment.

Ahmed M. Soliman of Soliman & Associates in Cherry Hill represented Delbello Enterprises and Chef Alberto Delbello.

Soliman said in a statement that the court "correctly reasoned that Il Portico is entitled to protections under federal law in situations like this where there is no likelihood of confusion between a restaurant in New York and that of my client nearly 100 miles away, and where the trademark was never enforced by plaintiff for several years."

Fife and Drum opened "Il Portico Ristorante" in October 1988 in Tappan. It is also known as Tappan Il Portico, or TIP. The owner is Giuseppe Peppe Pinton.

The Lanham Act precludes a defendant from challenging the ownership of a registered trademark after a period of five years if the registered trademark owner complies with certain formalities. These marks are referred to as "incontestable" under the Lanham Act.

According to the decision, around May 1995, IEJ Corp., based in Bensalem, Pennsylvania, opened an Italian fine dining restaurant in Philadelphia named "Il Portico."

Alberto DelBello was the principal of IEJ, and the owner and chef of the Philadelphia restaurant.

In 2012, DelBello closed the restaurant under the name Il Portico and renamed it "Tiramisu" at the same location until its permanent closure in 2016, when he moved to the suburbs and opened "Il Portico" in Burlington.

DelBello testified that he transferred the rights to the name "Il Portico" from the Philadelphia entity to the Burlington one.

On May 23, 2017, Fife and Drum filed its complaint, claiming trademark infringement, among other counts. The amended complaint sought only injunctive relief, waiving claims for damages, attorney fees, costs and interest.

Only one of the suit's five claims, for trademark infringement, was considered in Hillman's ruling, which followed a one-day trial May 13.

Delbello argued that Fife and Drum's suit was barred by the equitable doctrine of laches, which would bar relief even if it had infringed on Fife and Drum's trademark.

Hillman in his Nov. 1 ruling agreed.

"Laches becomes relevant where a senior trademark user 'delays in asserting its rights for so long that the junior user has developed sufficient demand and goodwill through its own efforts that it would be inequitable to enforce the senior's rights.'" he wrote.

Hillman said Fife and Drum had a right to file and maintain a suit from 1995 when the Philadelphia Il Portico opened, but didn't until after 2017, a 17-year gap.

The court still sought to determine the merits of Fife and Drum's Lanham Act claim, which requires a plaintiff to "demonstrate that (1) it has a valid and legally protectable mark; (2) it owns the mark; and (3) the defendant's use of the mark to identify goods or services causes a likelihood of confusion."

The parties did not dispute that Fife and Drum established the first two elements.

Hillman said, "A likelihood of confusion exists when the consumers viewing the mark would probably assume that the product or service it represents is associated with the source of a different product or service identified by a similar mark."

He said the identical names "weighs heavily in favor of a finding of likelihood of confusion."

But as for other factors, including the 17 years when there was no actual confusion between the two, are more problematic for Fife and Drum to surmount, said Hillman.

He also said Fife and Drum failed to demonstrate that Delbello acted with an intent to confuse, not merely an intent to copy, when it adopted the "Il Portico" mark in Philadelphia in 1995.

"While Plaintiff sought to suggest that the long delay in opening [in Burlington] proved abandonment and some form of mal-intent in resurrecting the name in the Burlington location, Defendant's explanation rings true," Hillman wrote.

"On the record as a whole, the Court concludes that Plaintiff has failed to meet its burden of establishing a likelihood of confusion," Hillman wrote. "Therefore, Plaintiff's trademark infringement claim fails."