The owner of Lake Effect Diner went to great lengths to prove that some people had confused the business with a similarly named ice cream store less than a mile away.
Tucker Curtin, the owner of the diner on Main Street in Buffalo, hired a private investigator, who interviewed workers and customers of Lake Effect Artisan Ice Cream on Hertel Avenue to determine whether confusion existed about the two establishments.
Lake Effect Artisan Ice Cream is owned by Erik Bernardi and Jason Wulf, lifelong friends from Lockport. They opened the business in 2008 after years of ice cream-making competitions in their home kitchens, they said in their pleadings. In fact, Curtin even approached one of them in 2011 about a business idea.
Dennis M. Adams, the private investigator, learned that customers did confuse the two places and that workers at the ice cream business told him that it happened often, according to an affidavit filed in U.S. District Court.
As a result of Adams’s findings, Curtin in February 2019 filed a copyright infringement lawsuit against Lake Effect Artisan Ice Cream. Lake Effect, which is a Fifties-era dining car-style diner,garnered nationwide recognition from the Food Network on Guy Fieri’s “Diners, Drive Ins, and Dives” on November 16, 2009.
“With 25 flavors of old-fashioned milkshakes, ice cream, vegan ice cream, ice cream cakes, and a hearty menu of home favorites, the LAKE EFFECT DINER has become a popular destination for locals and for travelers to the Western New York area,” the lawsuit contended.
“Defendants actions in adopting word and design marks that are confusingly similar to Plaintiff’s Mark have caused actual confusion and are likely to cause further confusion in the marketplace with respect to the origin of service,” the diner owner’s attorneys argued.
The case has since been settled out of court. Neither party will discuss the settlement, but it does not include a name change for Lake Effect Artisan Ice Cream, a source said. At least not yet.
Both Curtin and the attorney for the ice cream shop declined to comment, citing the private settlement agreement.
Legal filings by Lake Effect Artisan Ice Cream state that the two owners would see Curtin at various food events, including one in 2011 when Curtin “spoke at length” about his plan to purchase an old food warehouse for a local food hub that would service local chefs and businesses.
“During that conversation, Tucker and Jason discussed the possibility of selling Defendants’ ice cream in the food hub if enough freezer space was available,” court records state. “The project ultimately did not come to fruition.”
A few years later Curtin apparently approached the two owners again with a proposal for Lake Effect Artisan Ice Cream to rent part of Curtin’s other restaurant at the time, Dug’s Dive on the Outer Harbor, to sell their ice cream. That idea fizzled out, too, and Dug’s Dive closed in 2015.
“From 2008, when Lake Effect Artisan Ice Cream was created, until August 18, 2017, the date of Plaintiff’s first cease and desist letter, there was no indication (nor any discussion between the parties) that Plaintiff objected in any way to Defendants’ trademarks,” court records state.
That cease and desist letter came as a shock to the two owners.
But Curtin made a case that real confusion existed with customers.
Court filings include affidavits from three people who state that they thought Curtin, who also owns the Steer restaurant on Main Street, was involved in the ice cream business.
“At the beginning of this Summer I did go to Lake Effect Artisan Ice Cream store and ordered some ice cream,” James W. Pennington wrote in his affidavit.
“During that visit I did inquire to the clerk and asked if this establishment was a sister business to the Lake Effect Diner. The young man stated “No.”
“And he added, “but a lot of people ask like you did. They think that it might be the same owner – but its (sic) not.”
Italo Besseghini also wrote an affidavit stating that he has been an acquaintance of Curtin’s for years. He wrote that when the ice cream shop opened up Hertel he assumed that “Tucker expanded into the Ice Cream business, especially for the summer trade on Hertel.”
“I announced to many of my friends that Tucker had opened the ice cream shop and that it was pretty good,” he wrote. “Many said that they would try it not merely for the ice cream but to patronize another of Ticker’s establishments.”
Besseghini said “sometime later” when he wrongfully congratulated Curtin on entering the ice cream business, Curtin told him he had no connection to the ice cream store.
“In fact, he told me that several people had approached him to say that they were customers of his at the Lake Effect Artisan Ice Cream shop. And they were just as surprised as I was when Tucker said he had nothing to do with that business,” he wrote.
Even a sales associate for Premier Gourmet said he confused that the two establishments were owned by Curtin.
“Additionally, the wording of the Lake Effect Diner is so close to that of the Lake Effect Artisan Ice Cream that it caused me to believe that both were owned by Tucker Curtin.
“And because of this confusion I have had conversations with other persons involved in my trade in which I have relayed my erroneous belief that Mr. Curtin was now involved with the Lake Effect Ice Cream,” wrote Christopher Starck, of Premier Gourmet.
Mike Taheri, a local attorney who reviewed the case so he could comment, said it is clear that Curtin was determined to demonstrate that his business was being impacted by the similarly named businesses.
“And to do that, you got to have evidence,” Taheri said.
“[Curtin] put forth evidence in his pleadings that said, look, this is how I am going to prove my case at trial.”
The private investigator found even more evidence of the confusion.
Dennis Adams, the private detective hired for Curtin, said he took photographs of the ice cream shop’s signage and trademarks in the summer and fall of 2018. He also interviewed customers and vendors of both businesses “to determine whether or not there was consumer confusion between the two enterprises.”
He noted the Hertel ice cream store is less than a mile away from Lake Effect Diner and that the letters “LAKE EFFECT” had similar style to the signage at the Lockport Lake Effect Ice Cream location.
On Aug. 27, 2018, Adams ordered the “Chesterfield Sundae” from Lake Effect’s Hertel location. While there, he asked the counter clerk if Tucker was around.
The clerk said no one by that name worked at the establishment.
“I then stated that I thought Tucker owned the ice cream shop as he owned the nearby Lake Effect Diner. To which [the counter clerk] replied, “a lot of people ask that, but Lake Effect Ice Cream has nothing to do with the diner.”
On Sept. 4, 2018, Adams visited the Lake Effect’s ice cream’s Lockport location. He states in his affidavit that the clerk told him that customers do sometimes ask if the store is associated with the diner.
The following day, Adam visited the ice cream store on Hertel again and got a similar story from the new counter clerk.
When Adams asked the clerk if people get the two establishments confused, he responded, “Yes, that happens a lot!”
Taheri said the diner’s pleading point out that most people focus on the first two words of the names of both businesses.
“His theory is, look, they’re both named Lake Effect,” he said.
“We’ve got one on Hertel that’s within a mile of the other place. I think you’re creating the impression they must be owned by the same person, and Mr. Tucker Curtin didn’t want that impression.
“They both served ice cream. They were located in proximity to one another and they demonstrated through evidence, through these affidavits, and through their investigator, look, people are confused.”
As for the settlement, Taheri said settlements can be as creative as attorney want to make them.
Both sides, “saved a lot of judicial resources. You saved both sides litigation expenses and through that compromise, both sides in their stipulation said game over. We’re done,” Taheri said.