I’ve been practicing long enough to know that it’s not easy for my clients to find brands they like, much less ones that are free for them to use without worrying they will get a claim that they’ve violated another party’s rights. When restaurant clients come to me asking if they are free to use a brand name they like, I know they will face a few unique challenges, which I address here.
The first step in figuring out if a brand is available – “free to use” – is conducting a “trademark clearance search.” This search sets forth all the names of restaurants that are already in use, whether they are the subject of U.S. Trademark Registrations or not. Trademark attorneys (like me) commission and then review the search (which is always hundreds of pages) to determine if any names are “confusingly similar” to the desired name. Not only should a restaurant owner or operator (and their attorney) think about whether their chosen names have been used or registered by other restaurants, but they should also consider prior use or registration by food and beverage, including alcohol, brands. Second, if the restaurant/brand owner chooses to register a mark which has meaning in a foreign language (for example, “CAFÉ DELICIEUX), the search should include not only the foreign language name but the English language translation of the name (“CAFÉ DELICIOUS”). Third, even fictional names may be protected under trademark law, so a restaurant owner/operator should be wary of adopting a fictitious character or restaurant name from a book, television program, or film. Fourth, while it is very appealing to name a restaurant after a famous chef or owner (for example, BOULEY), or the family that owns it (for example, SMITH’S STEAKHOUSE) this sort of mark may be registrable only after certain requirements are met.
Prior Food or Beverage Marks
The Trademark Office and the courts will often consider “related” uses of names similar (phonetically or visually) to the restaurant owner or operator’s desired names. They have found that when names of foods or beverages are similar to the chosen restaurant name, the owners of those food/beverage names can “block” use or registration of the desired name. This rejection, however, is not automatic. A good example is the case of In re Coors Brewing Co., 343 F.3d 1340, (Fed. Cir. 2003).
In Coors, the Trademark Office had rejected the restaurant’s application for the brand BLUE MOON based on the prior registration of BLUE MOON by Coors for beer. In so doing, the Trademark Office relied upon evidence from several sources discussing the practice of some restaurants to offer private label or house brands of beer; evidence that brewpubs who brew their own beer often feature restaurant services; and copies of several third-party registrations showing that a single mark had been registered for both beer and restaurant services. However, the restaurant applicant countered with evidence that while there are about 1,450 brewpubs and microbreweries in the United States, there are over 800,000 restaurants, which means that brewpubs and microbreweries account for only about 18 one-hundredths of one percent of all restaurants. Id. at 1346, 68 USPQ2d at 1063. On this record, the court found that registration should be allowed, and reversed the Trademark office.
Thus, a restaurant owner or operator’s attorney should carefully evaluate whether the services and goods offered by the parties (that is the owner of the prospective, and the owner of the existing registered or common law mark, respectively) often come from a single source, or whether they don’t, as in the Coors case. Also, the fame of the food/beverage brand should be considered. It is perhaps stating the obvious to recognize that a name like COINTREAU or COORS for a restaurant would not be allowed due to the fame of the alcoholic beverage brands.
Foreign Language Marks
Restaurant owners/operators may frequently adopt foreign language words as their names when they serve and feature the foods of another country. When making sure these names are free to use, the restaurant owner/operator or its attorney should consider the English translation of the names, also. As a case in point, in In re Crystal Cruises, LLC, Serial Nos. 86950812 & 869508411 (December 6, 2018), the Trademark Office denied an application for a Japanese mark for restaurant services because the marks translated to “seahorse Japanese cuisine” in English. A prior party had registered SEAHORSE for bar and lounge services. A restaurant owner or operator cannot avoid this dilemma by applying for a mark in a foreign language (or adopting it without registration) and hope to avoid a conflict with another party as both the Trademark Office and the courts will require a translation. If on the other hand the language is little known (ancient Greek, or Latin) and consumers are not likely to know the English language translation, then the foreign language brand may be available.
Fictional Names as Protected Marks
It is easy to overlook the names of fictional characters or restaurants because a trademark clearance search will uncover only “real world” marks. However, the restaurant owner or operator should also alert its attorney if it has chosen a name from a favorite film, television show or book, because the authors or studios may in fact own the marks, even if fictitious. This was the case in Viacom International v. IJR Capital Investments, LLC No. 17-20334 (5th Cir. May 22, 2018). The court there found that the defendant could not adopt KRUSTY KRAB, named after the greasy spoon featured in SpongeBob SquarePants, for the name of a seafood restaurant chain.
Surnames or Full Names of Protected Marks
Restaurants are often named after their owners or chefs, particularly when the chefs are well-known. The Trademark Office will allow even a common surname (like “Brown” or “Smith”) to be registered if the Applicant can show that the name has become associated exclusively with the restaurant. That is exactly what happened when a court found SCHLAFLY was a registrable trademark. Bruce S. Schlafly and Phyllis Schlafly Revocable Trust, Successor-in-Interest to Phyllis Schlafly v. Saint Louis Brewery, LLC, Case No. 17-1468 (Fed. Cir. Nov. 26, 2018). In that case, and in others, the Trademark Office and courts will assume that consumers associate a surname with a single source (the restaurant) after it’s been used for a minimum of five years. However, even without such long use, high sales and large sums spent on advertising, a large geographic scope of use of the name, and rankings and awards won can establish consumer association of the surname exclusively with a single restaurant. Assuming nobody else has registered or used them, full names, either real (e.g. DAVID BOULEY) or fictional (TOMMY BAHAMA) may be registered as marks, but the consent of any living individual or a statement the individual, is not a living person, is required.
Thus, restaurants and brand owners face significant and unique—but not insurmountable—challenges when choosing a restaurant or brand name. Attorneys with experience in the food, beverage, and restaurant industries can help a restaurant navigate the path to a successful brand launch.
Should you have any questions about the subject of this article, or any trademark, unfair competition or copyright matter, please contact me at email@example.com.