halal guys
TRANSCRIPT
JUDGE NATHAN civil cover sheetJS 44C/SDNY
t REV. 4/2014
The JS-44 civil cover sheet and the information contained herein neither replace nor supplement the filing and servicej ofpleadings orother papers as required by law, except as provided by local rules ofcourt. This form, approved by the ! •*••. .. « » r%r\4 «Judicial Conference of the United States in September 1974, is required for use of the Clerk of Court for the purpose pf J>JJI (J | ^(jjdinitiating the civildocket sheet. ~
PLAINTIFFS
THE HALAL GUYS, INC.
Jp^mAL^I* rmolTSTafa h. elnag/
: NEW YORK.iH. ELNAGAR, MOUSTAFA A. ATTALLA,
and JOHN DOES 1-5,
ATTORNEYS (IF KNOWN)ATTORNEYS (FIRM NAME, ADDRESS, AND TELEPHONE NUMBERMaria A. Savio, Esq.Gottlieb, Rackman & Reisman, P.C.270 Madison Avenue, New York, N.Y. 10016, Tel. (212) 684-3900
CAUSE OF ACTION (CITE THE U.S. CIVIL STATUTE UNDER WHICH YOU ARE FILING AND WRITE ABRIEF STATEMENT OF CAUSE)(DO NOT CITE JURISDICTIONAL STATUTES UNLESS DIVERSITY)
Counterfeiting and Trademark Infringement under 15 U.S.C. § 1114(a) et seq, '•'•A... '•"'.
Has this action, case, or proceeding, or one essentially the same been previously filed in SDNY at any time? NeEVesOjudge Previously Assigned
If yes, was this case Vol. • Invol. • Dismissed. No [J Yes • If yes, give date &Case No..
IS THIS AN INTERNATIONAL ARBITRATION CASE?
(PLACE AN[x]INONE BOX ONLY)
TORTS
No [x] Yes •
NATURE OF SUIT
CONTRACT PERSONAL INJURY
[ ]310 AIRPLANE[ ]315 AIRPLANE PRODUCT
LIABILITY
[ 1320 ASSAULT, LIBEL&SLANDER
[ ]330 FEDERALEMPLOYERS'LIABILITY
[ ]340 MARINE[ ]345 MARINE PRODUCT
LIABILITY[ ) 350 MOTORVEHICLE[ ]355 MOTORVEHICLE
PRODUCT LIABILITY[ ]360 OTHER PERSONAL
INJURY[ 1362 PERSONAL INJURY -
MED MALPRACTICE
PERSONAL INJURY[ ]367 HEALTHCARE/PHARMACEUTICAL PERSONALINJURY/PRODUCT LIABILITY
[ ]365 PERSONAL INJURYPRODUCT LIABILITY
[ ]368 ASBESTOS PERSONALINJURY PRODUCTLIABILITY
PERSONAL PROPERTY
[ ]370 OTHER FRAUD[ 1371 TRUTH IN LENDING
FORFEITURE/PENALTY
[ ]625 DRUGRELATEDSEIZURE OF PROPERTY
21 USC 881
[ 1690 OTHER
] 110]120]130]140
•1150
]1511152
[ 1153
[]160
[ 1190
[ ]195
[ ]196
INSURANCEMARINE
MILLER ACT
NEGOTIABLE
INSTRUMENTRECOVERY OFOVERPAYMENTSENFORCEMENTOF JUDGMENTMEDICARE ACTRECOVERY OFDEFAULTEDSTUDENT LOANS(EXCLVETERANS)RECOVERY OFOVERPAYMENTOF VETERAN'S
BENEFITSSTOCKHOLDERSSUITS
OTHERCONTRACT
CONTRACT
PRODUCT
LIABILITY
FRANCHISE
REAL PROPERTY
]210
]220]230
]240]245
]290
LANDCONDEMNATIONFORECLOSURERENT LEASE &EJECTMENT
TORTS TO LANDTORT PRODUCTLIABILITY
ALL OTHER
REAL PROPERTY
[ ]380 OTHERPERSONALPROPERTY DAMAGE
[ 1385 PROPERTY DAMAGEPRODUCT LIABILITY
PRISONER PETITIONS
[ ]463 ALIEN DETAINEE[ ]510 MOTIONSTO
VACATE SENTENCE
28 USC 2255[ ]530 HABEAS CORPUS[ ]535 DEATH PENALTY
540 MANDAMUS & OTHER
ACTIONS UNDER STATUTES
CIVIL RIGHTS
[ ]440 OTHERCIVIL RIGHTS(Non-Prisoner)
[ ]441 VOTING[ )442 EMPLOYMENT[ ]443 HOUSING/
ACCOMMODATIONS[ ]445 AMERICANS WITH
DISABILITIES -EMPLOYMENT
[ ]446 AMERICANS WITHDISABILITIES -OTHER
[ ]448 EDUCATION
PRISONER CIVIL RIGHTS
[ 1550 CIVIL RIGHTS[ ]555 PRISON CONDITION[ 1560 CIVILDETAINEE
CONDITIONS OF CONFINEMENT
Check ifdemanded in complaint:
CHECK IF THIS IS ACLASS ACTIONUNDER F.R.C.P. 23
10 Million &Inji^iveRelief^
' -i +/"r<£r*'"_
LABOR
[ 1710 FAIR LABORSTANDARDS ACT
[ ]720 LABOR/MGMTRELATIONS
[ ]740 RAILWAYLABORACT[ ] 751 FAMILYMEDICALLEAVE ACT (FMLA)
[ ]790 OTHER LABORLITIGATION
[ ]791 EMPL RET INCSECURITY ACT
IMMIGRATION
[ ]462 NATURALIZATIONAPPLICATION
[ ]465 OTHER IMMIGRATIONACTIONS
ACTIONS UNDER STATUTES
BANKRUPTCY OTHER STATUTES
[ 1375 FALSE CLAIMS( (400 STATE[ ]422 APPEAL
28 USC 158 REAPPORTIONMENT
[ ]423 WITHDRAWAL [ ]410 ANTITRUST28 USC 157 [ ]430 BANKS&BANKING
[ ]450 COMMERCE[ ]460 DEPORTATION
PROPERTY RIGHTS [ ]470 RACKETEER INFLUENCED & CORRUPT
[ ]820 COPYRIGHTS ORGANIZATION ACT
[ ]830 PATENT (RICO)fc]840 TRADEMARK [ ]480 CONSUMER CREDIT
[ ]490 CABLE/SATELLITE TV
SOCIAL SECURITY [ ]850 SECURITIES/COMMODITIES/
[ ]861 HIA(1395ff) EXCHANGE
[ ]862 BLACK LUNG(923)[ ]863 DIWC/DIWW(405(g))[ ]864 SS IDTITLE XVI[ ]865 RSI (405(g)) [ ]890 OTHER STATUTORY
ACTIONS891 AGRICULTURAL ACTS
FEDERAL TAX SUITS
[ ]870 TAXES (U.S. Plaintiff orDefendant)
[ ]871 IRS-THIRDPARTY26 USC 7609
[ ]893 ENVIRONMENTALMATTERS
[ ]895 FREEDOMOFINFORMATION ACT
[ ] 896 ARBITRATION[ ] 899 ADMINISTRATIVE
PROCEDURE ACT/REVIEW OFAPPEAL OF AGENCY DECISIO
[ ]950 CONSTITUTIONALITY OSTATE STATUTES
•MTHISCASE IS RELATED TO A CIVIL CASE NOW PENDING IN S.D.N.Y.?
DOCKET NUMBER
IfWsW
JUDGEDEMAND $
Check YES only ifdemanded incomplaintJURYDEMAND: E YES UJO NOTE: You must also submitat the timeof filing the Statement of Relatedness form (Form IH-32;
(PLACEAN x INONEBOXONLY) ORIGIN
E1 Original D 2 Removed from • 3 Remanded D 4 Reinstated or Q 5 Transferred from Q 6 Multidistrict Q 7Appeal to DistrictProceeding c*Tr«.rt from Reopened (Specify District) Litigation Judge fromriuuccuma StateCourt trom Magistrate Judge
fj a. all parties represented Appellate Judgment
I | b. At leastoneparty is pro se.
(PLACE AN x INONEBOXONLY) BASIS OF JURISDICTION IF DIVERSITY, INDICATE• 1 US PLAINTIFF • 2 U.S. DEFENDANT [x] 3 FEDERAL QUESTION D4 DIVERSITY CITIZENSHIP BELOW.
(U.S. NOT A PARTY)
CITIZENSHIP OF PRINCIPAL PARTIES (FOR DIVERSITY CASES ONLY)
(Place an [X] in one box for Plaintiff and one box for Defendant)
PTF DEF PTFDEF PTF DEFCITIZEN OF THIS STATE []1 []1 CITIZEN OR SUBJECT OF A []3[]3 J5,?ORPORATED •^ '̂NCIPALPLACE []5 []5
FOREIGN COUNTRY OF BUSINESS INANOTHER STATE
CITIZEN OF ANOTHER STATE [12 []2 INCORPORATED or PRINCIPAL PLACE []4[]4 FOREIGN NATION []6 []6OF BUSINESS IN THIS STATE
PLAINTIFF(S) ADDRESS(ES) AND COUNTY(IES)The Halal Guys, Inc.10-02 34th AvenueAstoria, New York 11106USA
DEFENDANT(S) ADDRESS(ES) AND COUNTY(IES)The Halal Guys of New York, Inc.,Moustafa H. EINagar, Moustafa A. Attalla21-78 35th Street, #3CAstoria, New York 11105USA
^pIpS!^^ AT THIS TIME, IHAVE BEEN UNABLE, WITH REASONABLE DILIGENCE, TO ASCERTAINRE9I0ENCE ADDRESSES OF THEFOLLOWING DEFENDANTS:
John Does 1-5
Check one- THIS ACTION SHOULD BE ASSIGNED TO: • WHITE PLAINS E MANHATTAN(DO NOT check either box if this a PRISONER PETITION/PRISONER CIVIL RIGHTSCOMPLAINT.)
DATE July 1, 2014 SIGNATUREOF ATTORNEY OF RECORD ' ADMITTED TO PRACTICE IN THIS DISTRICTj^-^X ft 4nAS~~U - }j YES (DATE ADMITTED Mo.10 Yr. 1985 )
RECEIPT # Attorney Bar Code # MAS7756
Magistrate Judge is to be designated by the Clerk of t|T£A9*rtfy^f}Magistrate Judge is so Designated.
Ruby J. Krajick, Clerk ofCourt by Deputy Clerk, DATED .
UNITED STATES DISTRICT COURT (NEW YORK SOUTHERN)
JUDGE NATHAN 14 CV 4940UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF NEW YORK
THE HALAL GUYS, INC.,a New York Corporation
Plaintiff,
-against-
THE HALAL GUYS OF NEW YORK, INC.,a New York Corporation,MOUSTAFA H. ELNAGAR, an individual,MOUSTAFA A. ATTALLA, an individual,and John Does 1-5
Defendants.
ECF CASE
Civil Action No. ro»r~
-r»^ CO
COMPLAINT
CO
oeni—
I
o
LEDRiCTC
JURY TRIAL DEMANDED
Plaintiff The Halal Guys, Inc. ("The Halal Guys"), for its complaint against the
defendants The Halal Guys of New York, Inc. ("The Halal Guys of New York"), Moustafa H.
Elnagar ("EINagar"), Moustafa A. Attalla ("Attalla') and John Does 1-5 (collectively, "Defendants"),
states as follows onknowledge as toPlaintiff and otherwise oninformation and belief:
INTRODUCTION
1. Plaintiffistheowner and operator ofseveral mobile food carts located onthe
streets of New York City (NYC) which serve halal food under the service mark THE HALAL
GUYS. Plaintiffsmark isfederally registered for restaurant services rendered viamobile food carts.
Plaintiff opened its first brick and mortar restaurant on 14th Street and 2nd Avenue on Saturday,
June 28, 2014, next to the locationof one of Plaintiff s food carts.
2. Without Plaintiffs consent, and knowing full well of Plaintiff, and of
Plaintiffsreputation and goodwill, the Defendants have recently begun to operate amobile food cart
serving halal food under the name THE HALAL GUYS OF NEW YORK on and about 14th Street
and University Place inNYC. The Defendants' use ofthe mark THE HALAL GUYS OF NEW
YORK contravenes Plaintiffs rights, and blatantly infringes one of Plaintiffs federal trademark
registrations. Indeed Defendants' mark THE HALAL GUYS OF NEW YORK is acounterfeit of
Plaintiffs mark THE HALAL GUYS. Defendants' acts have and will cause irreparable harm tothe
Plaintiffs reputation and goodwill and must be preliminarily and permanently enjoined.
THE PARTIES
3. Plaintiffisacorporation organized and existing under the laws ofthe State of
New York having a corporate address at 10-02 34th Avenue, Astoria, Queens, New York 11106.
Plaintiff owns and operates several mobile food carts located in NYC, and recently opened a
restaurant on 14th Street at about 2nd Avenue. See a copy of the The Halal Guys Food Cart
Operation is Opening its First Brick-and-Mortar Restaurant, in the East Village, With aLot More
Planned, by Carol Kuruvilla, NEW YORK DAILY NEWS available also online at:
http://www.nvdailvnews.com/life-stvle/halal-guvs-expanding-food-carts-restaurants-article-
1.1845910. See Exhibit A annexed hereto.
4. Plaintiffs first food cart began operating under the mark THE HALAL GUYS
over 13 years ago at least as of November 2000 at the North East (NE) corner of6th Avenue and 53rd
Street location, and prior in time was serving halal food from its food cart at that location.
5. Defendant The Halal Guys of New York is a corporation formed in 2013
under the laws ofthe State ofNew York having a corporate address at 21-78 35l Street, #3C,
Astoria, New York 11105. The Halal Guys ofNew York recently began operating amobile food
cart under the mark THE HALAL GUYS OF NEW YORK on 14th Street in NYC, afew blocks from
Plaintiffs cart on that street and Plaintiffs now open brick & mortar restaurant.
6. Defendant EINagar is a principal ofdefendant TheHalal Guys ofNewYork.
El Nagar manages, controls and operates the business The Halal Guys ofNew York, and as such he
is responsible for the tortious acts ofThe Halal Guys ofNew York. The Halal Guys ofNew York is
so dominated and controlled by El Nagar that said individual and the corporate defendant are
interchangeable with one another.
7. Defendant Attalla is aprincipal ofdefendant The Halal Guys ofNew York.
Attalla manages, controls and operates the business The Halal Guys ofNew York, and as such he is
responsible for the tortious acts ofThe Halal Guys ofNew York. The Halal Guys ofNew York is so
dominated and controlled by Attalla that said individual and the corporate defendant are
interchangeable with one another.
8. There may be other persons who are involved in the infringement ofPlaintiffs
rights and hereby sues them by fictitious names John Does 1through 5. Plaintiffhas yet to confirm
the true identities and acts ofparticipation ofDoes 1through 5,inclusive, and therefore must now
sue them by such fictitious names. Plaintiff is informed and believes that each ofthe defendants
designated as aDoe is liable in some manner for the acts and omissions, damages and injuries of
which Plaintiffalleges in this Complaint. Plaintiffwill seek to amend the Complaint to state the true
identities of Does 1 through 5 when ascertained.
JURISDICTION AND VENUE
9. Thisactionarisesunderthetrademark lawsof the UnitedStates, theLanham
Trademark Actof theUnited States, 15 U.S.C. § 1051 et seg,, andunder the statutory and common
laws of the State ofNew York.
10. ThisCourt hasjurisdiction over thesubject matter ofthisaction pursuant to28
U.S.C. §1338(a). This Court also has supplemental jurisdiction over the state law claims pursuant to
28 U.S.C. §1367 (a).
11. This Court has personal jurisdiction over Defendants because the Defendants
are doing business inthe State ofNew York from afood cart located inNYC, the named corporate
defendant is a New York Corporation, and the named individual defendants reside inthe State of
New York. Each Defendant has committed one ormore tortious acts giving rise tothe allegations of
this complaint in the State ofNew York and thus they also transact business in New York. The Doe
defendants do business and/or transact business inthis district through the activities ofthe named
corporate defendant, and are otherwise within the jurisdiction ofthis Court.
12. Venue is proper in thisjudicial district pursuant to 28 U.S.C. §1391 because
this is an action brought pursuant to the Lanham Trademark Act, Defendants conduct business in this
judicial district, the corporate defendant is subject to personal jurisdictionhere, and the events giving
rise to the allegations of this complaint occurred inthis district.
BACKGROUND
A. The Goodwill and Reputation of The Halal Guvs is at Stake
18. Plaintiffs business was founded in 1990. The business originally operated as
ahot dog cart on the NE corner of 6th Avenue and 53rd Street until it transitioned to afood cart
serving halal chicken and lamb over rice in about 1992. The business began operating under the
name THE HALAL GUYS at least as ofNovember 2000.
19. Plaintiffhas developed a strong following over theyears and itspatrons come
far and wide tohave Plaintiffs halal food. Patrons sometimes stand onaline for hours waiting to be
served. To satisfy its patron's growing demands, Plaintiffopened through the years additional food
carts atvarious otherlocations inNYC, including justacross thestreet from its"original location" on
the NE corner of 6thAvenue and53rd Street.
20. Plaintiffsreputation and goodwill has made possible its continued expansion
and growth: first to local brick &mortar restaurants. See The Halal Guys are coming to the East
Village, EV GRIEVE, June 18,2013 available online at http://evgrieve.com/2013/06/the-halal-guys-
are-coming-to-east.html; The Halal Guys, NYC's Favorite Food Cart, IsFinally Getting Its Own
Restaurant;' by Anthony Selden, ELITEDAILY.COM, October 1, 2013 available online at
http://elitedailv.com/envision/food/the-halal-guvs-nvcs-favorite-food-cart-is-finallv-gettin^-its-own-
restaurant/: Halal Guys to Open Restaurant in East Village, by Amelia Pang, EPOCH TIMES,
October 1,2013 available online at http://www.theepochtimes.com/n3/305332-halal-guys-to-open-
restaurant-in-east-village/; Halal Guys food cart to open restaurant in East Village, by Carol
Kuruvilla, NEW YORK DAILY NEWS, October 2, 2013 available online at
http://www.nvdailvnews.com/life-stvle/eats/halal-guvs-food-cart-open-restaurant-east-village-article-
1.1474330; Halal Guys Move From Food Cart to Restaurant, by Dina Exil,
FOODWORLDNEWS.COM, October 5, 2013 available online at
fatto://www.foodworldnews.coin/articles/4436/20131005/haM
The Halal Guys: Union Square, by Shantal Cheong, SPOON UNIVERSITY NYU, November 2,
2013 available online at http://nvu.spoonuniversitv.com/restaurant/halal-guvs-union-square/.
21. The NEW YORK TIMES recently announced that Plaintiff would beopening
brick & mortar restaurants across the USAas well as internationally:
Butthings areaboutto change fortheGuys. More thana decade afterthree Egyptian men switched from selling hot dogs from theirMidtown cart to serving halal food to Muslim cabdrivers, the HalalGuys areaboutto become a fast-food chain. Thecompany—foundedbyMohamed Abouelenein, Ahmed Elsaka and Abdelbaset Elsayed—signed a deal with Fransmart, therestaurant franchise consulting firmthattook FiveGuysBurgers andFries from fourlocations inNorthernVirginia andhelped turn it into a chain with more than 1,200 storesand more than $1 billion in sales last year. Qdoba, a Mexican foodchain, is Fransmart's other success story.
Within a year Fransmart hopes to open Halal Guys outlets in LosAngeles, along the East Coast, across Canada and inthe Middle East.The five-year plan is for 100 locations, as well as a presence inEurope.
See The Halal Guys: Cashing in on Street Cred, by Alex Vadukul, NEW YORK TIMES, June
13, 2014 available online at www.nvtimes.com/2014/06/15/nvregion/the-halal-guys-cashing-in-
on-street-cred.html. See Exhibit B annexed hereto.
B. Plaintiffs Federally Registered Trademark Rights
22. Plaintiff registered its long used trademarks in the United States Patent and
Trademark Office. Plaintiffowns all right, titleand interest in andto the mark:
THE HALAL GUYS
This mark is the subject ofU.S. Registration No. 4253742 issued by the United States Patent and
Trademark Office onDecember 2,2012 inconnection with restaurant services provided via mobile
food carts which cites a date of first use at least on or before November 2000. A copy of this
trademark registration is attached as Exhibit C.
23. Plaintiff owns all right, title and interest in and to the mark referred to as
'THE HALAL GUYS GYRO AND CHICKEN" LOGO:
This mark is the subject of U.S. Registration No. 4253743 issued bythe United States Patent and
Trademark Office on December 4, 2012 in connection with restaurant services in the nature of
mobile food carts and which cites a date of first use of January 2001. A copy of this trademark
registrationis attached as Exhibit D.
24. Plaintiffowns allright, title and interest inand tothemark known asthe THE
HALAL GUYS Cart and Patron Line" Design Mark:
This mark is the subject ofU.S. Registration No. 4254017 issued by the United States Patent and
Trademark Office on December 4, 2012 in connection with restaurant services in the nature of
mobile food carts and which cites a date of first use of January 2001. A copy of this trademark
registration is attached as Exhibit E.
C. Defendants' Unlawfully Competing Activities AndPlaintiffs Efforts to Halt the Violation of its Mark
25. Knowing full well ofPlaintiff, Plaintiffs reputation and goodwill, Defendants
incorporated abusiness under the name The Halal Guys ofNew York, Inc., in 2013. Defendants'
knowledge derives from the fact that the individual defendants operate ahalal food cart under anon
infringing name at the same location on the NE corner of53th Street and 6th Avenue as does Plaintiff,
but the individual defendants' food cart at that location operates during day-light hours, while
Plaintiffs food cart under the mark THE HALAL GUYS at that location does not commence
operation until 7pm daily. Defendants' are thus well aware ofPlaintiffsbusiness which operates
under the mark THE HALAL GUYS at the NE corner of 56th Street and 6th Avenue, as well as the
location ofPlaintiffs other food carts, including Plaintiffs food cart on 14th Street.
26. In mid-late May of 2014, Plaintiff became aware that Defendants began
operating afood cart on 14th Street just afew blocks away from Plaintiffs own food cart on 14th
Street and that such food cart bore the mark THE HALAL GUYS OF NEW YORK in direct
competition with Plaintiff for Plaintiffs patrons.
27. Upon learning ofsuch food cart, in an effort to quickly stop the counterfeiting
and infringement ofPlaintiffsmark and the public confusion that would result therefrom, Plaintiff
enlisted the help ofthe police authorities to put Defendants on notice ofits rights. In early June
2014, in a further effort to stop the counterfeiting and infringement ofPlaintiffs mark and the
damage to the goodwill of its brand, Plaintiff decided to also pursue its civil remedies against the
conduct of the Defendants.
28. On June 2, 2014, Plaintiffs counsel sent a notice to Defendants, copy of
which isattached hereto as Exhibit Fmade apart hereof, advising Defendants ofPlaintiffs rights
and demanding that Defendants' counterfeiting and infringing activity cease immediately. While to
date there has been no formal response to that letter, Defendants appeared to have promptly ceased
8
their operations under the mark THE HALAL GUYS OF NEW YORK when, shortly after
Defendants' receipt ofsuch letter, Plaintifflearned Defendants had taken down their offending signs.
29. OnJuly 18,2014, after having been advised thattheDefendants appeared to
have taken down their signs thus ceasing use of themark THE HALAL GUYS OF NEW YORK,
counsel for Plaintiffsenta secondletterto Defendants, copyof which is attached hereto as Exhibit
Gand made apart hereof, noting that she was informed that the unlawful activity appeared to have
ceased and informing Defendants that Plaintiff still required Defendants to change their corporate
name.
30. Rather than change their corporate name, Plaintiffsubsequently learned that
Defendants once again put up their signs and again began operating their food cart on 14l Street in
NYC under the mark THE HALAL GUYS OF NEW YORK, inwillful and reckless disregard of
Plaintiffs rights, ofwhich they are on notice. See photographs ofDefendants' food cart which are
attached as Exhibit H hereto and made a part hereof. As can be seen from the photographs,
Defendants are not only infringing Plaintiffsregistered service mark THE HALAL GUYS (Exhibit
C), they are also mimicking Plaintiffs "THE HALAL GUYS GYRO AND CHICKEN" LOGO (See
Exhibit D), and otherwise unfairly competing with Plaintiff.
P. The Irreparable Harm andInjury Plaintiff will Suffer
31. It has taken many years of dedication, hard work and consistent customer
satisfaction for The Halal Guys to build their goodwill and reputation in the name THE HALAL
GUYS. Defendants' blatant appropriation of Plaintiffs business name, mark and goodwill will
result in Plaintiffbeing associated with afood cart and business over which Plaintiffhas no control.
32. The unlawful activities ofDefendantswill result in actual or likelyconfusion
among consumers as to the source and origin ofthe food served atthe Defendants' food cart, and
will cause irreparable harm to the reputation and goodwill of the Plaintiff.
33. The infringement and counterfeiting ofplaintiffsmark THE HALAL GUYS
could not have come at a worse time. It has commenced on the eve of a New York Times article
about Plaintiff (see Exhibit B) and Plaintiffs announcement that itwill be franchising its business,
both in the USA and in foreign countries, and the opening of Plaintiffs first brick and mortar
restaurant in NYC.
34. Unless the activities of the Defendants are preliminary and permanently
restrained and enjoined, the goodwill and reputation that Plaintiff has earned will be irreparably
destroyed. Furthermore, Plaintiffs patrons and the public will be confused and deceived into
thinking that businesses not associated with Plaintiffbelong to or are associated with Plaintiff. This
confusion will be exacerbated by apatron's knowledge ofPlaintiffsexpansion, and thus patrons and
the public will assume that athird party's food cart trading under the name THE HALAL GUYS OF
NEW YORK are one and the same with Plaintiff, since obviously Plaintiff isTHE HALAL GUYS
"ofNew York" and references toTHE HALAL GUYS "ofNew York" are references to Plaintiffs
business.
35. Defendants acts are intentional, willful and blatant. They act with full
knowledge that they are violating the rights of the Plaintiff, and do so without regard to their
violation of the law.
E. Plaintiffs Patrons and The Public will be Confused
36. There is no doubt thatPlaintiffs patrons andthe public willbeconfused by
Defendants' use of a counterfeit mark to refer to Defendants' business. Some of Plaintiffs
10
customers are already asking how they can distinguish Plaintiffs business from its imitators. As
such, notonly thePlaintiffbutPlaintiffs patrons andthepublic willbeharmed anddamaged unless
this Court grants the relief requested herein.
COUNT I
VIOLATION OF 15 U.S.C. §1114
(Trademark Counterfeiting)
37. This cause ofaction arises under Section 32 ofthe Lanham Act, as amended,
15 U.S.C. §1114 et seq., for counterfeiting of a federally registered mark.
38. Plaintiff repeats and realleges the allegations contained in the forgoing
paragraphs 1 through 36 as though fully set forth herein.
39. The foregoing acts ofthe defendants are likely to cause confusion, mistake and
deception in commerce among members ofthe purchasing public and the trade as to the true source,
origin, or sponsorship oftheir restaurant services provided by a mobile food cart. Use by defendants
of the mark THE HALAL GUYS OF NEW YORK constitutes clear and direct counterfeiting of
plaintiffs rights in and to its federally registered mark THE HALAL GUYS.
40. The mark THE HALAL GUYS OF NEW YORK is a spurious designation
that is identical with or substantially indistinguishable from Plaintiffs mark for the identical services
registered by Plaintiff for its mark.
41. Defendants' acts have been committed with the knowledge that that such
imitation is intended to be used to cause confusion, or to cause mistake or to deceive the consumer
and the public.
42. Defendants have intentionally used the mark THE HALAL GUYS OF NEW
11
YORK knowing such mark is acounterfeit mark in connection with restaurant services provided by
mobile food carts.
43. The acts of Defendants described herein were undertaken without the
permission, license or consent of Plaintiff.
44. As a result of the Defendants' acts, Plaintiff has suffered irreparable injury.
Plaintiff has no adequate remedy at law.
45. Plaintiffis entitled to an order preliminarily andpermanently enjoining and
restraining thedefendants fromengaging in saidactsasprovided under15USCSection 1116(a), and
to a seizure upon ex-parte application as providedunder 15 USC Section 1116(d)(1).
46. Plaintiff is entitled to three times the amount of its profits or damages,
together with reasonable attorney's fees, as permitted in 15 USC Section 1117.
COUNT II
VIOLATION OF 15 U.S.C. §1114
(Trademark Infringement)
47. This cause ofaction arises under Section 32 ofthe Lanham Act, as amended,
15 U.S.C. §1114 et esq., for infringement of a federally registered mark.
48. Plaintiff repeats and realleges the allegations contained in the forgoing
paragraphs 1 through 36 as though fully set forth herein.
49. The foregoingacts ofthe defendantsare likely to cause confusion,mistakeand
deception in commerce amongmembersof the purchasing publicand the tradeas to the true source,
origin, or sponsorship of their restaurant services provided bya mobilefoodcart. Usebydefendants
of the mark THE HALAL GUYS OF NEW YORK constitutes clear and direct infringement of
12
plaintiffs rights in and to its federally registered mark THE HALAL GUYS.
50. The mark THE HALAL GUYS OF NEW YORK is identical with or
substantially indistinguishable from Plaintiffsmark for theidentical services registered byPlaintiff
for its mark.
51. Defendants' acts have been committed with the knowledge that that such
imitation is intended to be used to cause confusion, or to cause mistake or to deceive the consumer
and the public.
52. Defendants have intentionally used the mark THE HALAL GUYS OF NEW
YORK knowing such mark is an infringing mark in connection with restaurant services provided by
mobile food carts.
53. The acts of Defendants described herein were undertaken without the
permission, license or consent of Plaintiff.
54. As a result of the Defendants' acts, Plaintiff has suffered irreparable injury.
Plaintiff has no adequate remedy at law.
55. Plaintiff is entitled to an order preliminarily and permanently enjoining and
restraining the defendants from engaging in said acts as provided under 15 USC Section 1116(a).
56. Plaintiff is entitled to three times the amount of its profits or damages,
together with reasonable attorney's fees, as permitted in 15 USC Section 1117.
COUNT in
VIOLATION OF 15 U.S.C. §1125(a)
(False Designation of Origin)
57. This cause of action arises under Section 43(a) of the Lanham Act, as
13
amended, 15 U.S.C. §1125(a), for false designation of the origin and false description and
representation.
58. Plaintiff repeats and realleges the allegations contained in the foregoing
paragraphs 1-36 as though fully set forth herein.
59. The Defendants' use oftheir purported THE HALAL GUYS OF NEW YORK
mark is likely to cause confusion as to the source, origin or sponsorship of their goods.
60. The foregoing acts of the Defendants constitute false designation of origin,
false descriptions and false representations in commerce that the defendants' food cart is that of
plaintiff, or is sponsored, approved, authorized by or affiliated with Plaintiff.
61. The Defendants' actions are likely to cause confusion or mistake among
consumers and the public as to the true origin, source, sponsorship or affiliation of the defendants'
food cart in violation of Section 43(a) of the Lanham Act, as amended.
62. Plaintiff has no control over the quality of the food served at Defendants'
food cart which is promoted, advertised and sold under the mark THE HALAL GUYS OF NEW
YORK, with the result that Plaintiffs valuable goodwill in its mark will be damaged.
63. As a result of the Defendants' acts, Plaintiffhas suffered irreparable injury.
Plaintiff has no adequate remedy at law for the Defendants' continued acts.
64. Plaintiff is entitled to an order preliminarily and permanently enjoining and
restraining the Defendants from engaging in said acts.
65. Plaintiff is entitled to damages, to be trebled, for the willful and intentional
conduct of Defendants.
14
COUNT IV
VIOLATION OF NEW YORK GEN. BUS. LAW § 360-1 and 349-b(Injury toBusiness Reputation and Deceptive Business Practices)
66. Plaintiffrepeats and realleges each allegation inparagraphs 1to 36 hereofas if
fully set forth herein.
67. By reason ofthe practices and acts set forth above, Defendants have injured
Plaintiffs business reputation.
68. The foregoing activities ofDefendants are without thepermission, license or
consent ofPlaintiffand, unless enjoined by this Court, Defendants will continue these practices and
acts, thereby harming Plaintiffs business reputation and causing Plaintiffimmediate and irreparable
injury.
69. Defendants' wrongful acts violate Section 360-1and 349-h of the New York
General Business Law.
70. Defendants' foregoing activities have irreparably damaged Plaintiffandhave
further caused Plaintiff monetary damages in an amount as yet unknown, but if Defendants'
foregoing activities continue, the damage to Plaintiff will exceed $10,000,000. Defendants'
wrongful acts have caused andwill continue tocause Plaintiffto suffer irreparable harm for which it
has no adequate remedy at law.
COUNT IV
UNFAIR COMPETITION AND MISAPPROPRIATION UNDER THE COMMON LAW
71. Plaintiffrepeats andrealleges each allegation inparagraphs 1to36hereofasif
fully set forth herein.
15
72. The aforesaid activities ofDefendants misappropriate and trade upon the fine
reputation and goodwill ofplaintiff, thereby injuring that reputation and goodwill, and unjustly divert
from plaintiffto Defendants the benefits rightfully belonging to plaintiff.
73. The aforesaid activities of Defendants constitute unfair competition, false
advertising and misappropriation as proscribed by the common law.
74. The aforesaidactivities of Defendants are likelyto result in confusionbetween
Defendants' food cart and Plaintiff and/or Plaintiffs food carts and business.
75. The aforesaid activities ofDefendants have caused and will cause Plaintiffto
sustain monetary damage, loss and injury.
76. The aforesaid activities of Defendants have been undertaken in bad faith.
77. Defendants have engaged and continue to engage in the foregoing activities
knowingly and willfully and in total disregard of Plaintiffs intellectual property rights.
78. Defendants' foregoingactivitieshave irreparablydamagedplaintiffandhave
further caused plaintiff monetary damages in an amount as yet unknown, but if Defendants'
foregoing activities continue, the damage to Plaintiff will exceed $10,000,000. Defendants'
wrongful actshavecausedand will continueto causePlaintiffto sufferirreparable harmforwhichit
has no adequate remedy at law.
WHEREFORE, Plaintiff prays for a judgment against Defendants as follows:
A. Finding that Defendants have counterfeited Plaintiffs mark THE HALAL
GUYS in violation of the Lanham Act, 15 U.S.C. §1114 and Defendants are thus liable to Plaintiff
for treble damages or profits therefore;
16
B. Finding that Defendantshave infringedPlaintiffs mark THEHALAL GUYS
in violation of the Lanham Act, 15 U.S.C. §1114 and Defendants are thus liable to Plaintiff for
damages or profits therefore;
C. Findingthat Defendants have violated 15 U.S.C. § 1125 (a) of the Lanham
Act, and Defendants are thus liable to Plaintiff for damages or profits therefor;
D. Finding that Defendantshave violatedNew York GeneralBusinessLaw§360-
1and 349-h, and Defendants are thus liable to Plaintiff for damages or profits therefor;
E. Finding that Defendants' actions constitute unfair competition and
misappropriation under the common law ofthe State ofNew York and Defendants are thus liable in
damages therefor;
F. Enjoining Defendants preliminarily during the pendency of this action and
permanently hereafter from:
i. Using the Plaintiffs mark THE HALAL GUYS in any manner;
ii. Using any mark confusingly similar to Plaintiffs registered mark THE
HALAL GUYS, including but not limited to Defendants' use of the mark THE HALAL
GUYS OF NEW YORK;
iii. Using the Plaintiffs marks "THE HALAL GUYS GYRO AND
CHICKEN" LOGO and THE HALAL GUYS Cart and Patron Line" Design Mark, or marks
confusingly similar thereto, in any manner;
iv. Misleading the public into thinking that Defendants' food cart(s)
and/or businesses are associated with, sponsored or endorsed by the Plaintiff;
iii. Operating Defendants' food cart under the business name "The Halal Guys of
17
Plaln«'fforwith any ofPlaintiffs marks;
°. ^"^efenaan-oCeiivenoPiain^^^^,
,o,tre,d; R AWard-~S——^M„whdaugffi
^ngactivities a„d aWarding Plaintiffsuch^ ^ ^ ^̂ ^J- Awarding Plaintiffs attorneys fees and costs; and
JURYDFlUATvrn
Plaintiffdemands atrial by jury on all facts so triable.Dated: New York, New York
July 1,2014
GOTTLIEB, RACKMAN &REISMAN PC
1
M^iaA7s^v]o7MAS^756)Samantha Rothaus270 Madison AvenueNew York, New York 10016Phone: (212) 684-3900Fax: (212) 684-3999
Attorneys for Plaintiff
18
EXHIBIT A
Halal Guys food cart to open restaurant in East Village - NY Daily News http://www.nydailynews.com/life-style/eats/halal-guys-food-cart-open-r...
lof5
EVENTS HEALTH HOr^ES FOOD
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AUTOS HOROSCOPES EDUCATION C0MCS GAMES LMNG PICS FASHION PICS BLOGS
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Halal Guys food cart to open restaurant inEast VillageThe famed Halal Guys are bringing their 'magic' white sauce and fiery red chili sauceto 14th Street and 2nd Ave. The general manager promises more vegetarian optionsand, perhaps, a juice bar.
BY CAROL KURUVILLA Follow / NEW YORK DAILY NEWS / Wednesday, October 2, 2013, 4:12 PM AAA
I, !l ji Imm '•
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JOW TAGGART FOR NEW YORK OAIY
K's official! In November. The Halal Guys will be opening up a n*w restaurant on 14th St.
LKOTCWKLIIHv"
King Souvlaki ofAstoria to vie for
Vendy Cup
Vendy Awards 2013El Olomega ofBrooklyn takes topcart
Bloomberg Gradefood carts, too1
The Halal Guys are heading downtown.
The famed food carl, known for the long late-night lines it draws on 53rd St. and
6th Ave., is opening a restaurant in the East Village this November.
The new location on 14th St. and 2nd Ave. will feature shish kebabs, more
vegetarian options, and a juice bar, according to general manager Hesham
Hegazy.
Meet the three dirties .,..,, _,. .... .,_ . . j „,, r J4 t, ..food vendors in We re working with the mtenor designer now, Hegazy confirmed to The News,Brooklyn adding that The Guys are planning to add some sparse indoorseating to the
venue.
JUNE 28MACVSHtRAID SQUARE
NYC-NOON
CTOMHW
The Halal Guys areexpanding from foodcarts to restaurants
The men behind the wildlypopular Halal Guys foodcarts are about to open their
first restaurant — the start
BBQ In the Boros:dethrones two-timedefending championand Staten Islander
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6/27/2014 10:52 AM
Halal Guys food cart to open restaurant in East Village - NY Daily News htrp://www.nydailynewsxorn/life-style/eats/halal-guys-food-cart-open-r..
2 of 5
JOHN TAGGART FOR NEW YORK DAILY
The food stand started out as a hot dog cart in 1990, according to general manager Hesham Hegazy.
The team scouted out the area by opening up a cart on that corner two weeks
ago. They chose the East Village for its club scene and NYU's nearby 14th
street dorm, Hegazy said.
The cart is currently open from 11 a.m. to 4 a.m., and Hegazy plans to make sure
the restaurant stays open for just as long.
"It's ambitious, yes," Hegazy said. "But our customers have been asking about
this for years."
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JOW TAOGAR1 FOR rCUV YORK OAIY
Tht stand Is popular destination In the tri-state area, especlaly among Deste—people of SouthAsian descent.
The news comes as both surprise and relief to many waiting it out on The Halal
Guys line this Monday.
"Finally," said Minsu No, a 22-year-old who traveled by car to the city from
Palisades Park, N.J., just for the cart's chicken and lamb combo. He couldn't find
parking, so he said a friend was driving around while he waited in line.
"I've been eating here for nine years," No told The News. "I'd be at that store
every day."
JOttl TAOOMtT FOR NEW YORK DAILY
The Halal Guys are known for their gyros and rice platters, whkh have stayed around $6 for thepast 23 years.
The Halal Guys started out as just another hot dog cart in 1990. The company's
founders then realized there was money to be made by selling Halal food to the
Muslim cabbies who drove through Midtown.
Since then, the company has grown to operate five food stands — including two
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6/27/2014 10:52 AM
HalalGuys food cart to openrestaurant in EastVillage - NY DailyNews http://www.nydailynews.com/life-style/eats/halal-guys-food-cart-open-r..
3 of5
stands on 6th Ave. another one on 7th Ave. and a lonely outpost at Queens'
LaGuardia Community College.
Hegazy said he's even fielded franchise requests from people in Europe and
South Asia.
•',%&-„••&
JOffl TAGGART FOR WW YORK DAILY
What's so great about the food? Several people on line this Monday said that R was the white sauce."What do they put in there? Magic, maybe?" asked Minsu No, from HJ.
Still, the lines are the longest at the cart's original location on the southwest
corner of 53rd and 6th. Even though the cart on the southeast corner is selling
the same food, there are rarely any lines on that side of the street.
Part of the The Halal Guys draw seems to be linked to the word-of-mouth
marketing that built its fame in the first place. It's the story people tell their
friends, that there's this one food cart on this one random corner in the city that
sells this one amazing dish — but woe to the foodie who orders from the wrong
guys.
"It's psychological," Hegazy explains. "Our name is a brand."
It remains to be seen whether tying that brand to an actual New York address
will hold the same mythical power over its fan base.
24-year-old Richard Park, from Palisades Park, N.J., has been eating The Halal
Guys' food for nearly a decade and he had no idea that there was more than
one location. He's a bit more hesitant about the move downtown.
"I'lldefinitely go, but I don't think there would be as much of a scene," Park told
The News. "I like this atmosphere, being outside. And at 4 a.m., watching all the
drunk people from the clubs standing on line."
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•
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6/27/2014 10:52 AM
EXHIBIT B
> Edit ^•t^^gasas'i^srsifW 8 The Halal Guys Cashing In on...
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FROM
The Halal Guys: Cashing In onStreet CredByALEXVADUKUL JUNE 13.2014
a
D
Some empires are managed from a
distance: in corner offices, fromcellphones on beaches, under palmfrondswhilebeingfannedbyservants.
Hesham Hegazy,the general managerof the Midtown street-food empire theHalal Guys, prefers sitting by awindow at a Starbucks at West 53rdStreet and Sixth Avenue, where nightafter night he can observe his
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street-cart workers as they serve
platter after platter of chicken and
rice for ever-replenishing lines ofcustomers.
Google p + * a m =
f+ SHARE
One recent evening, Mr. Hegazy, 54,
wearing a traditional kufi, sat with a
coffee at one of his regular tables,with two Halal Guys carts within sightacrossthe way.He willsometimessit there late into the night. "Towatch the guys," he said, gesturing to the scene.
Mr. Hegazymanages one of the longest-running and best-knownfood-cartbusinesses in NewYorkCitywith a style best described asold-fashioned. Hereceives emailbut almostneverresponds to it,preferringto conductbusinessover the phone or in person at thecoffee shop.
The Halal Guys attracting a crowd, and a tourist. Camille Panzera of Brazil.
Hesham Hegazy, 54,the general managerof the Halal
To proudly illustrate a slory abuul Hie
Halal Guys being the first halal cart to
secure a trademark, he made a fast
phone call in Arabic; moments later, aboyish-looking young man appearedat the table with a takeout bag bearingthe logo as proof.
Before Mr. Hegazy arrives in theevenings, cart workers have been
known to set out cones to secure him
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s 6 <* N.Y. / REGION The Halal Guys:CashingIn on StreetCred
Cuys. conducting business at a Starbucks in Midtown.a parking spot on Sixth Avenue. The
Halal Guys know how to work thestreet.
But things are about to change for the Guys.More than a decade afterthreeEgyptian menswitched fromselling hot dogsfromtheirMidtown cart to servinghalal foodto Muslimcabdrivers, the HalalGuysare about to becomea fast-foodchain.The company —foundedbyMohamed Abouelenein, Ahmed Elsaka andAbdelbaset Elsayed —signed a dealwithFransmart, the restaurantfranchise consulting firmthat took FiveGuysBurgers and Fries from four locations in NorthernVirginia and helped turn it into a chain with more than 1,200 stores
and more than $1billionin sales last year.Qdoba,a Mexicanfoodchain,is Fransmart's other successstory.
Within a year Fransmart hopes to open Halal Guysoutlets in LosAngeles,along the East Coast,across Canada and in the Middle East.Thefive-year plan is for 100locations, as wellas a presenceinEurope.
"It'sgoing tobe the Chipotle ofMiddle Easternfood," DanRowe,Fransmart's chiefexecutive, said.Only a few franchise-industryinsidersknowof the deal —the newswillbe formally announcedatthe InternationalFranchise ExpostartingJune 19at the Jacob K.Javits Convention Center in Manhattan —but Mr. Rowe said the
interest so far had been tremendous. "Alot of people want thisbrand,"he said. Buthowwilla brand so intrinsically tied to thestreetsofNew York translateinto a fast-food chainfoundin strip
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malls?
Theother day,a customereating lunch from the HalalGuysofferedhis opinionon the news. Anthony Greco, 26,whoworksin finance,was sitting on a sun-baked granite bench near the Museum of Modern
Art devouring a platter. He said he had "no doubt" the franchisewould besuccessful. "I thinkit is a stapleofNew York, so it's goingtobedifferent," hesaid."Meand myboyscomein fromJersey,throughthe tunnel, on nights just to eat it."
But Mr. Greco conceded that part ofthe appeal was the atmosphere. "It
will lose something," he said. "Youlook forward to eating it on thestreet"
An early glimpse at what a Halal Guysfranchise might look like vrill comenext month when the first shop opens
on 14th Street, just off SecondAvenue. Asecond location is plannedto open near Columbia University's
: -'• Y : campus in the fall.Though theserestaurants are technically not
franchises (the Fransmart contract
wassignedafter the companydecidedto expandfromthe carts), theirdesignand their menuscouldprovidethe templatefor futurelocations.
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The popular food-cart business will move into its firstbrickand-mortarshopon 14thStreet,just offSecondAvenue, next month.
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The 14thStreetshophasa sign with thefamiliar Halal Guys yellow (anod to taxi cabs). The gyro and chicken dishes from the trucks willbeonthe menu,aswellas newhealthieroptionsand MiddleEasterndesserts. Inanemail, Mr. Rowe said thattheportions might belargerand slightlymore expensive —a platter at the truck costs $6 - andthat the shops willbe designedfor "speedlikethe carts."
Butthefood seems almost secondary to thebrand'spotential. "Whatcharges meup is wewillbethe firstand the biggest Middle Easternstreet-food concept," Mr. Rowe said.
"Everyone has heardofthem," he added. "They've gotthe streetcred.It's got everythinggoingfor it."
Mr. Rowe pursued the HalalGuysaggressively - he described thefranchise asa "category killer" —eventually taking thetrainupfromWashington for discussions. He met Mr.Hegazy at the Starbucks.Negotiations took more than a year.
When asked if he was concerned that
the company's name or its
associations with Muslim culture
might not playas well in certain partsof the country (halal food is preparedin accordance with Islamic law), Mr.Rowe said it never affected his
confidence. He couldeasilyenvisionaplan that took HalalGuysfranchisesfrom Miami through Florida
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• S The Halal Guys Cashing In on..
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s 6 Q. N.Y. / REGION The HalalGuys: Cashing In on Stmt Cred
MohamedAbouelenein,left,and Abdelbaset Elsayed,whosigned a franchise deal. radiating from Boston and Chicago
into the suburbs. "Bythe time we're
in Chattanooga," he said, "there willbe so much good buzz, they will be
excited to try it."
Today,you can find carts servingpork-and-chivedumplings, lobsterrolls and fat-marbled pastrami sandwiches on rye. But the Midtownof the early '90s as described by the original Halal Guyswas a barrenlandscape for street food,aside from hot dog carts.
Theownershad been approachedin the past with franchisingopportunities, but Mr. Elsayedsaid that now felt like the right time,adding that they were comfortable with Mr. Rowe."People from allover the world come here and they wonder what's going on," he saidin his strongly accented English."Whyyou guys so busy? What's sogood about it? And that makes us wonder, it's about time tofranchise." He also emphasi2ed that the carts would remain.
Howmuch money the Halal Guysmakes is something ofa mysteryand has been a sourceof speculationamongfoodbloggers."Wesell alot"is the most definitive answerMr. Hegazy will offer. "I neversay."
"Weare a street cart; they watch us like this," he said of the InternalRevenueService,making the "I've got my eyeon you" gesture with hisfingers.
ZachBrooks,the founder ofMidtownlunch.com. a popular blogthathas chronicled the city's street-food scene since 2006, has followed
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= 6 0, N.Y./REGION The Halal Guys: Cashing InonStreet Cred
the HalalGuys foryears. "Those cartsprobably pullin a couplehundred grand a year," he said. "But I don't want to sound like an
idiot. They could be making a million bucks."
Asto whythe brand has becomeso strong, appearing on the to-dolists of tourists and standing abovecountless imitators, that, too, issomething ofa mystery. Maybe, Mr. Brooks suggested, the HalalGuysused better meat? Maybe it was the white sauce that is slathered overeverything? Maybe it's because people can't remember a time whenthey weren't there?
"It's the most perfectly crafted platter of street meat there is," heconcluded.
But Mr. Brooks was ambivalent about the franchise news. "I don't
know, man," he said. "In a lot of ways you can't take street meat offthe streets."
NEXTIN N.Y./ REGION
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EXHIBIT C
Ttatvitet* states of SW^Vli^ WLnitzb &tam patent anb tErabetnarfe (Pfftce *-*#
THE HALAL GUYS
Reg. No. 4,253,742
Int. CI.: 43
SERVICE MARK
PRINCIPAL REGISTER
THE HALAL GUYS, INC. (NEW YORK CORPORATION)10-02 34TH AVENUE
Registered Dec. 4,2012 astoria, ny ii106FOR: RESTAURANT SERVICES PROVIDED VIA MOBILE FOOD CARTS, IN CLASS 43(U.S. CLS. 100 AND 101).
FIRST USE 11-0-2000; IN COMMERCE 11-0-2000.
THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIMTO ANY PARTICULAR FONT, STYLE, SIZE, OR COLOR.
NO CLAIMIS MADETO THE EXCLUSIVE RIGHTTO USE "HALAL", APART FROM THEMARK AS SHOWN.
SER. NO. 85-602,185, FILED 4-19-2012.
HOWARD B. LEVINE, EXAMINING ATTORNEY
Director of the United States Patent and Trademark Office
EXHIBIT D
M>~ SHtiiteb States? 29atent anb ^rabcmarfe <&fiict ^*f
Reg. No. 4,253,743
Int. CI.: 43
SERVICE MARK
PRINCIPAL REGISTER
THE HALAL GUYS, INC. (NEW YORK CORPORATION)10-02 34TH AVENUE
Registered Dec. 4, 2012 astoria, ny iiioeFOR: RESTAURANT SERVICES PROVIDED VIA MOBILE FOOD CARTS, IN CLASS 43(U.S.CLS. 100 AND 101).
FIRST USE 1-0-2001; IN COMMERCE 1-0-2001.
NO CLAIMIS MADE TO THEEXCLUSIVERIGHT TO USE "HALAL" AND "GYRO ANDCHICKEN", APART FROM THE MARK AS SHOWN.
THE MARK CONSISTS OF THE STYLIZED WORDING "THE HALAL GUYS GYROANDCHICKEN" IN A CIRCLE WITH A ROTISSERIEAND GYRO MEATAND A HORIZONTALLINE BACKGROUND WITHIN A SECOND CONCENTRIC CIRCLE
SER. NO. 85-502,193, FILED 4-19-2012.
HOWARD B. LEVINE, EXAMINING ATTORNEY
Director of the United States Patent and Trademark Office
EXHIBIT E
^iteto states of ®mer,>.V2>* Hmteb gtfate* patent anb HCrabemarfe Office v*f
Reg. No. 4,254,017
Int. CL: 43
SERVICE MARK
PRINCIPAL REGISTER
THE HALAL GUYS, INC. (NEW YORK CORPORATION)10-02 34TH AVENUE
Registered Dec. 4, 2012 astoria, ny ii106
FOR: RESTAURANT SERVICES PROVIDED VIA MOBILE FOOD CARTS, IN CLASS 43(U.S. CLS. 100AND 101).
FIRST USE 1-0-2001; IN COMMERCE 1-0-2001.
THE MARK CONSISTS OF A FOOD CART AND CUSTOMER LINE.
SER. NO. 85-607,545, FILED 4-25-2012.
HOWARD B. LEVINE, EXAMINING ATTORNEY
Director of the United States Patent and Trademark Office
EXHIBIT F
DAVID S.KASHMAN
ALLEN I.RUBENSTEINJEFFREY M.KADENTIBERIUWBSZMAPJAA.SAV10MARC P. MISTHAL
BARRY R.LEWIN
COUNSEL
DIANA MULLET
wanMntiMor*momHAOM.v
Gottlieb, Rackman & Reisman, p.c.COUNSELORS AT LAW
PATENTS • TRADEMARKS • COPYRIGHTS • INTELLECTUAL PROPERTY
270 Madison AvenueNew York, N. Y. 10016-0601
PHONE: (212) 684-3900 FACSIMILE: (212)684-3999WEB: http://www.grr.com - E-MAIL: [email protected]
DONNA L. MIRMANBARBARA H. LOEWENTHAL
ARIEL S.PEIKESSAMANTHA6.ROTHAUS
JONATHAN M. PUROWROBERT P. FEINLAND
JASON R. WACHTER
PATENT AGENTZOYAV.CHERNINA
OF COUNSELGEORGE GOTTLIEB
JAMES REISMAN
June 2,2014
THREE DAY NOTICE TO STOP COUNTERFEITING ACTIVITY
VIA FEDERAL EXPRESS
The Halal Guys ofNew York Inc.Moustafa H. ElNagarMoustafa A. Attalla
21-78 35th Street, #3CAstoria, New York 11105
Re: Counterfeiting and Infringement of trademark rightsof The HalalGuvs
Dear Sirs:
We are intellectual property counsel to The Halal Guys Inc., of New York City.You obviously know our client and its business because you operate a food cartand thesame location as our client, but at a different time frame. Our client has been providinghalal food in New York City via a mobile food cart at the streetcornerdiagonal cornersof 6th Avenue and 53th Street since at least 2000. People stand on a long line outdoorswaiting to purchase and eat ourclient's food. They have many friends on Facebook andhigh ratings on YELP. Our client's YELP page has thousands of reviews. Trip Advisorhas ranked our client's food cart as the top 50 of 7,959 restaurants in New York City. Ourclient also has carts located inQueens and on 14th Street onSecond Avenue.
Our client's name and reputation is important to it. The USPTO issued to ourclient a Federal Trademark Registration for the following mark:
THE HALAL GUYS®
Class 43: Restaurant services provided via mobile food carts.Registration Number: 4253742
Registration Date: December 4, 2012
Our client will enforce its trademark rights,enclosed.
A copy of our client's registration is
The Halal Guys ofNew YorkMoustafa H. EINagarMoustafa A. Attalla
June 2,2014Page 2
We have recently learned that you just began operating a halal food cart on 14*StreetUnionSquare in NYC under the name The Halal Guys of New York (see enclosedphotos), and that you formed a corporation under that name (see enclosed records ofSecretary ofState New York).
Your use of our client's name and mark THE HALAL GUYS for a food cart willto causeconfusion, mistake, and deception. Specifically, the public is likely to incorrectlyassume that your food cart is associated with, sponsored or endorsed by or somehow isotherwise connected with our client, when in fact it is not. Given our client's prior use ofits mark and the distinctiveness and recognition that its name and mark THE HALALGUYS have come to have since it was first adopted in 2000, we must demand that youimmediately cease and desist your use of the name and mark THE HALAL GUYS in allforms. Your use of "of New York" does not mitigate confusion, because obviously ourclient is "of New York" as well. Anything short of the immediate termination of youractivities under our client's name and mark will be a fraud on the public, and will subjectyou to injunctive relief and money damages, including treble damages for willful andintentional violation of our clients rights, andfortrademark counterfeiting, all in violationof the Trademark Laws of the United States 15 U.S.C. §1114(a) et seq. Pleaseunderstand that counterfeiting carries both penal and civil consequences, and our clientwill pursue all its remedies to stop theusurpation of its goodwill and the confusion of thepublicengendered by your activities.
Accordingly, we trust this matter can be promptly resolved and we look forwardto confirmation by the close of business on June 5. 2014 from you or your counsel thatyou have permanently desisted from all uses of our client's name and mark, includingremovingthe name on the food cart and changing your corporate name.
Unless we hear from you before said date, we will assume that you intend tocontinue thisoffending conduct and, as such, wewill takeall steps deemed necessary andappropriate to protect our client's legal and financial interests, and to mitigate theconfusion which now abounds amongthe public. This letter is without prejudice to all ofour client's rights and remedies, including the rightto seek a temporary restraining orderon ex-parte application, and well as preliminary and permanent injunctive relief in thecourts, and money damages.
Very truly yours,GOTTLIEB-, RACKMAN & REISMAN, P.C.
MAS/sf Maria A. SavioEnclosures
cc: Hesham Hegazy (By E-mail)
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THE HALAL GUYS
Ree No. 4,253,742 i"H£ halal guys, inc. cnewyork corporation)& 10-02 34TH AVENUE
Registered Dec. 4,2012 astoria, ny ii106
Int. CL: 43
SERVICE MARK
PRINCIPAL REGISTER
FOR: RESTAURANT SERVICES PROVIDEDVIA MOBILE FOOD CARTS. IN CLASS 43(U.S.CLS. 100AND 101).
FIRST USE 11-0-2000;IN COMMERCE 11-0-2000.
THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PARTICULAR FONT, STYLE, SIZE OR COLOR.
NO CLAIM IS MADE TO TOE EXCLUSIVE RIGHT TO USE "HAI.AL", APART FROM THEMARK AS SHOWN.
SER. NO. 85-602,185, FILED 4-19-2012.
HOWARD B. LEVINE, EXAMINING ATTORNEY
Diceciorafrhe Ufltal Sum P«cm and T«kmrt Office