NOT PRECEDENTIAL

UNITED STATES COURT OF APPEALS

FOR THE THIRD CIRCUIT

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No. 14-3683

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BENIHANA OF TOKYO, INC.

v.

BENIHANA, INC.; NOODLE TIME, INC.

Benihana of Tokyo, Inc., now known as Benihana of Tokyo, LLC,

Appellant

______________

On Appeal from the United States District Court

for the District of Delaware

(D.C. Civ. No. 1-10-cv-01051)

Honorable Sue L. Robinson, District Judge

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Argued June 18, 2015

BEFORE: AMBRO, FUENTES, and GREENBERG, Circuit Judges

(Filed: August 11, 2015)

______________

Gerald M. Clodomir

Saul Ewing 

222 Delaware Avenue

Suite 1200

Wilmington, DE 19899

Kevin G. Collins

David M. Powlen

Barnes & Thornburg

1000 North West Street
2

Suite 1500

Wilmington, DE 19801

Joseph L. Manson, III (argued)

600 Cameron Street

Alexandria, VA 22314

Mark R. Owens

Barnes & Thornburg

11 South Meridian Street

Indianapolis, IN 46204

 Attorneys for Appellant

Todd Anthony Coomes

Robert W. Whetzel

Richards, Layton & Finger

920 North King Street

One Rodney Square

Wilmington, DE 19801

Alan H. Fein (argued) 

Joshua A. Munn

Jenea M. Reed

Stearns, Weaver, Miller, Weissler, Alhadeff

& Sitterson

150 West Flagler Street

Suite 2200

Miami, FL 33130

 Attorneys for Appellees

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OPINION

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GREENBERG, Circuit Judge.

I. INTRODUCTION

 

 This disposition is not an opinion of the full Court and pursuant to I.O.P. 5.7

 does not constitute binding precedent.
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This matter comes on before this Court on an appeal from a summary

judgment in favor of appellees, Benihana, Inc., and its subsidiary, Noodle Time Inc., in 

an action brought against them by appellant, Benihana of Tokyo, Inc. See Benihana of 

Tokyo, Inc. v. Benihana, Inc., 59 F. Supp. 3d 654 (D. Del. 2014). As a matter of 

convenience, we will refer to appellees as though they are a single entity. Because we are 

satisfied that there is no dispute of material fact and appellee is entitled to a judgment as a 

matter of law, we will affirm the District Court’s order for summary judgment. 

II. FACTUAL AND PROCEDURAL BACKGROUND

A. Factual History

We only need summarize the facts of this case. Rocky Aoki founded appellant 

Benihana of Tokyo, Inc. in 1963. The success of the Benihana undertaking led appellant 

to open numerous Benihana restaurants. Though the parties have set forth the Benihana 

corporate history at length in their briefs, it is sufficient for our purposes to indicate that 

the Benihana interests subsequently incorporated appellee Benihana, Inc. and that

appellant and appellee entered into an “Amended and Restated Agreement and Plan of 

Reorganization” (“ARA”) governing their relationship. A dispute over the application 

and meaning of the ARA is at the heart of this case.

The ARA provided for the sale, transfer, and assignment of restaurants and related 

assets, including trademarks, from appellant to appellee or to its wholly owned subsidiary 

within a geographical area that the ARA called and to which we refer as the “Territory.” 

The trademarks were listed on a schedule in the ARA and included “BENIHANA” and 
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an accompanying flower design. The ARA specified that appellee’s Territory was “the 

United States (including its territories and possessions), Central America, South America 

and the islands of the Caribbean [S]ea,” a largely Western Hemisphere area. But 

appellant retained the ownership of the Benihana trademarks in the rest of the world. 

Significantly, appellant and appellee agreed that neither party would make any use of the 

trademarks that reasonably could be expected to diminish the trademarks’ value or 

usefulness to the other party. Specifically, the ARA provided:

[Appellee] will own the Trademarks in the Territory and [appellant] will 

continue to own the Trademarks outside of the Territory. Accordingly, [the 

parties] agree that, without the prior written consent of the other, neither 

will make any use of the Trademarks which could reasonably be expected 

to reduce the value or usefulness of the Trademarks to the other party. In 

addition, [the parties] shall be responsible for the proper registration and 

maintenance of the Trademarks and the prosecution of infringements or 

potential infringements of the Trademarks in the territories where such 

party has an interest in the Trademarks . . . . The obligations of this Section 

shall survive the Closing for an indefinite period.

J.A. at 93. 

On or about April 23, 2010, appellee filed an application with the World 

Intellectual Property Organization (“WIPO”) seeking to register the BENIHANA 

trademark in Iceland, Iran, Monaco, Singapore, Ukraine, Vietnam, and Zambia, countries 

outside of its Territory. On July 5, 2010, appellee followed this initial application with a 

second WIPO application seeking to register the Benihana flower design trademark in 

several countries outside its Territory, including Iceland, Iran, Monaco, Ukraine, and 

Zambia.
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Appellant objected to these trademark registration applications and consequently 

filed this action against appellee on December 3, 2010. In response, on January 28, 2011, 

appellee submitted a “Request for the Recording of a Renunciation” with the WIPO, 

renouncing registration of the Benihana flower design trademark in countries outside of 

its Territory. In February 2011, appellee filed a second “Request for the Recording of a 

Renunciation” with the WIPO, similarly renouncing registration of the BENIHANA 

trademark in countries outside of its Territory. 

In addition to formally renouncing the applications for the registrations, appellee 

has filed an affidavit in this action executed by its attorney stating that it “will not pursue 

international registration of trademark rights in the countries located in [appellant’s] 

[t]erritory as defined in the ARA.” J.A. at 277. In a March 2014 email exchange 

between the parties’ attorneys, appellee confirmed that it would not file international, 

national, or other applications in an attempt to register trademarks in the area reserved to 

appellant in the ARA. Id. at 458. 

B. Procedural History

As we have indicated, on December 3, 2010, appellant filed its complaint in this 

action in the District Court alleging that appellee breached the ARA by seeking to 

register the trademarks with the WIPO.1 On December 7, 2010, appellant filed an 

amended complaint charging appellee with breach of contract, conversion, false 

 

1 We are concerned with only one claim of wrongdoing on this appeal because in its 

brief, the only act of wrongdoing that appellant charges appellee committed, as 

distinguished from legal theories pursuant to which it claims appellee is liable, is that 

appellee attempted to “register the Benihana Trademarks in [appellant’s] exclusive 

territory.” Appellant’s br. at 1.
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designation of origin, and false advertising. In addition to seeking damages and 

injunctive relief, appellant sought a declaratory judgment asking the Court to designate 

the places in which appellee could register the Benihana trademarks. Appellee reacted to 

the amended complaint on February 4, 2011, by filing a motion to dismiss, which the 

District Court granted on December 11, 2011. The order of dismissal, however, granted 

appellant leave to amend its complaint.

On January 9, 2012, appellant filed a second amended complaint alleging breach 

of contract, conversion, and false designation of origin, and again seeking declaratory 

relief. On February 14, 2014, appellee moved for summary judgment on all of 

appellant’s claims, and by an opinion and order entered on July 22, 2014, followed by a 

judgment entered on July 23, 2014, the District Court granted appellee’s motion. In 

reaching its result the Court indicated that appellee’s filing of the applications for 

registration was not a use within the meaning of the ARA and that appellant had not 

shown that appellee had damaged it within the meaning of the ARA. Appellant has filed 

a timely appeal.2

III. JURISDICTION AND STANDARD OF REVIEW

Appellant is a New York corporation with its principal place of business in New 

York City. Benihana, Inc. is a Delaware corporation and its subsidiary, Noodle Time, 

Inc., is a Florida corporation, but each appellee has its principal place of business in 

 

2 Appellee filed an answer and a counterclaim, but the parties have filed a stipulation of 

dismissal of the counterclaim with prejudice.
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Florida. The District Court had jurisdiction under 28 U.S.C. §§ 1331, 1332, and 1338. 

We have jurisdiction under 28 U.S.C. § 1291. 

Our standard of review of the District Court’s grant of summary judgment is 

plenary. See State Auto Prop. & Cas. Ins. Co. v. Pro Design, P.C., 566 F.3d 86, 89 (3d 

Cir. 2009). Summary judgment “is appropriate when the evidence shows that there is no 

genuine issue of material fact and that the moving party is entitled to a judgment as a 

matter of law.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247, 106 S.Ct. 2505, 

2510 (1986). An issue of fact is “genuine” if the evidence “is such that a reasonable jury 

could return a verdict for the nonmoving party.” Id. at 248, 106 S.Ct. at 2510. On a 

summary judgment motion, a court “must consider the evidence in the record in the light 

most favorable to the nonmoving party.” Smith v. City of Allentown, 589 F.3d 684, 689 

(3d Cir. 2009).

IV. DISCUSSION

A. Breach of Contract Claim

We will affirm an order for summary judgment in a breach of contract action 

turning on the meaning of the contract when the contract is unambiguous and the moving 

party was entitled to judgment as a matter of law. Tamarind Resort Assocs. v. Gov’t of 

the V.I., 138 F.3d 107, 111 (3d Cir. 1998). The District Court determined that appellant 

did not make a showing that appellee breached the ARA because the word “use” in the 

term “any use” in the ARA dealing with trademarks has an unambiguous meaning and 

appellee’s filing of the registration applications was not a “use” of the trademarks within 
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the meaning of the ARA and thus did not breach the ARA. The Court also held that 

appellee’s filing of the applications did not damage appellant or diminish the value or 

usefulness of the trademarks to appellant. 

Under New York law, which the parties agree is applicable, an action for breach of 

contract requires proof of (1) a contract, (2) performance of the contract by one party, (3) 

breach by the other party, and (4) damages. Rexnord Holdings, Inc. v. Bidermann, 21 

F.3d 522, 525 (2d Cir. 1994). It is well-settled that “[t]he fundamental objective of 

contract interpretation is to give effect to the expressed intentions of the parties.” 

Lockheed Martin Corp. v. Retail Holdings, N.V., 639 F.3d 63, 69 (2d Cir. 1994) 

(citations and internal quotation marks omitted). “The best evidence of what parties to a 

written agreement intend is what they say in their writing.” Greenfield v. Philles 

Records, Inc., 780 N.E.2d 166, 170 (N.Y. 2002) (citation and internal quotation marks 

omitted).

Where there is a dispute over the meaning of a contract, “the threshold question is 

whether the contract is ambiguous.” Lockheed Martin, 639 F.3d at 69. “Ambiguity is 

determined by looking within the four corners of the document, not to outside sources.” 

JA Apparel Corp. v. Abboud, 568 F.3d 390, 396 (2d Cir. 2009) (citation and internal 

quotation marks omitted). A court makes the determination of whether a contract is 

ambiguous as a matter of law. Law Debenture Trust Co. v. Maverick Tube Corp., 595 

F.3d 458, 465 (2d Cir. 2010). A contract is unambiguous “if the language it uses has a 

definite and precise meaning, as to which there is no reasonable basis for a difference of 

opinion.” Lockheed Martin, 639 F.3d at 69. “[A] written agreement that is complete, 
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clear and unambiguous on its face must be [interpreted] according to the plain meaning of 

its terms, without the aid of extrinsic evidence.” Law Debenture Trust, 595 F.3d at 467 

(internal quotations and citations omitted). “In interpreting a contract under New York 

law, words and phrases . . . should be given their plain meaning, and the contract should 

be construed so as to give full meaning and effect to all of its provisions.” LaSalle Bank 

Nat’l Ass’n v. Nomura Asset Capital Corp., 424 F.3d 195, 206 (2d Cir. 2005). 

After our consideration of this matter, we are unwilling to hold that appellee did 

not use the trademarks when it filed the registration applications with the WIPO. Indeed, 

we think that a reasonable person might conclude that an entity attempting to register a 

trademark is using it. After all, if you base an application on something, here trademarks, 

are you not using the thing on which you base your application? Consequently, though 

the District Court thought otherwise, we are not certain that the appellee did not use the 

trademarks when it filed its applications, and, accordingly, will not join in its conclusion 

on this point. But neither do we reject the District Court’s conclusion that filing an 

application for registration of a trademark is not a use within the meaning of the ARA. 

Instead, we do not decide whether the filing of an application for registration of a 

trademark is a use of the trademark as we have no need to decide this issue.

The ARA only prohibits a party’s use of trademarks without consent of the other 

party outside of the user’s territory if the use “could reasonably be expected to reduce the 

value or usefulness of the Trademarks to the other party.” As the District Court 

observed, appellant has not demonstrated how appellee’s applications to register the 

trademarks had that effect, particularly when it is remembered that appellee abandoned 
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the registration processes before their completion. Appellant certainly has had the 

opportunity to make this showing, but even on this appeal at oral argument, when we 

raised the reduction in value or usefulness question, appellant was unable to explain how 

appellee’s actions reduced the value or usefulness to it of its interest in the trademarks or 

otherwise damaged it. For example, appellant did not claim that it could not open a 

restaurant or lost customers in restaurants outside of appellee’s Territory attributable to 

appellee’s filing of the applications for registration of trademarks outside of its Territory. 

We realize that appellant argues that it should be entitled at least to nominal 

damages because New York law ordinarily allows an award of nominal damages against 

a party breaching a contract even if the breach has not caused the other party to suffer 

actual damage. Hirsch Elec. Co. v. Cmty. Servs. Inc., 145 A.D.2d 603, 605, 536 

N.Y.S.2d 141,142 (App. Div. 1988). But nominal damages are not available here 

because the ARA provides that the party using the trademarks has not breached its 

obligations under the ARA unless its use of a trademark has damaged the other party by 

reducing the value or usefulness of the trademark to the other party. Therefore, the 

District Court correctly granted appellee summary judgment.

B. Declaratory Judgment Is Improper

Appellant requested that the District Court issue a declaratory judgment indicating 

that the ARA only transferred trademarks to appellee within the area of appellee’s 

Territory. We agree with that Court that the issuance of a declaratory judgment was not 

warranted because there is no current conflict between the parties with respect to the 

places where the parties may register the ARA trademarks. The absence of a dispute is 
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obvious because appellee has withdrawn its trademark registration applications and 

expressly has stated that it will not file trademark registration applications in the area 

reserved to appellant. Moreover, appellant is not suggesting that it intends to file an 

application for a trademark registration in appellee’s Territory.

The Declaratory Judgment Act, 28 U.S.C. § 2201, “creates a remedy by which 

federal courts may declare the rights and other legal relations of any interested party 

seeking such a declaration when there is a case of actual controversy.” Brockstedt v. 

Sussex Cnty. Council, 794 F. Supp. 2d 489, 499 (D. Del. 2011) (citation and internal 

quotation marks omitted). “[T]he question in each case is whether the facts alleged, 

under all the circumstances, show that there is a substantial controversy, between parties 

having adverse legal interests, of sufficient immediacy and reality to warrant the issuance 

of a declaratory judgment.” Md. Cas. Co. v. Pac. Coal & Oil Co., 312 U.S. 270, 273, 61 

S.Ct. 510, 512 (1941). A plaintiff bringing an action for declaratory judgment must 

prove, by a preponderance of the evidence, that there is an actual controversy between the 

parties. Edmunds Holding Co. v. Autobytel Inc., 598 F. Supp. 2d 606, 608-09 (D. Del. 

2009). Here, it is clear that there is not a “substantial controversy . . . of sufficient 

immediacy and reality to warrant the issuance of a declaratory judgment” or, indeed, any 

controversy at all. Md. Cas. Co., 312 U.S. at 273, 61 S.Ct. at 512. The fact is that since 

appellee renounced the applications for registration, this case has been a lawsuit looking 

for a controversy.
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V. CONCLUSION

For the foregoing reasons, we will affirm the District Court’s order of July 22, 

2014, and judgment of July 23, 2014.