Whether clever and cute or straightforward and simple, a restaurant’s branding is one of its most important assets. A name or logo, also known as a trademark, is often guests’ first impression of a business—not to mention how people differentiate one place from another.
Over time, a mark becomes synonymous with a restaurant’s reputation and helps drive new and repeat business.
This concept is nothing new. Bass Brewery’s ubiquitous red triangle dates back to 1876, when the logo became the first registered trademark issued by the British government. In today’s competitive marketplace, however, there are so many marks that the process of choosing one is a bit more complicated, especially in the realm of food services, restaurants and bars.
Today, anyone who introduces a new mark faces the risk that someone, somewhere may have already beat them to it, or may try to copy it later.
To protect a mark and minimize the chances of a potential lawsuit, restaurateurs should use an ongoing strategy of searching, registration, and surveillance. Think of these prudent practices as a three-legged (bar) stool to support your business and avoid headaches along the way.
The likelihood of innocently adopting a mark that is similar to another’s—whether three states away or on the other side of the country—is surprisingly common. While people can be very creative, it is also possible that two restaurateurs can have the same brilliant idea.
The U.S. Patent and Trademark Office (USPTO) grants rights to a mark on a first-come, first-served basis. Before committing money to resources like signage, menus or a website and establishing a reputation in the local community, the first step to selecting a mark is to diligently search for similar marks within the same industry. Searching early and often is the best way to recognize and reduce any risks of suddenly having to change your name, pay money damages or face legal fees.
In the days before the internet, searching trademarks was a difficult and time-consuming process. There were companies that made their living on charging big bucks to review federal records for you. Now, quite a bit of diligence can be done for free online. At a minimum, a Google search is a good place to start. Also, anyone can access USPTO records on its website to determine the availability of a new mark.
If you do find a similar mark has previously been registered or is currently in use, don’t stop there. Check what type of goods or services, target purchasers and channels of trade are being offered. When reviewing an application, the USPTO will analyze if there is a likelihood of confusion.
For example, Champion has been used for ages on sparks plugs and sportswear. Why is that? The marks are the same, but the goods are so wildly different that both can coexist in the marketplace without confusion. On the other hand, the USPTO’s Trademark Trial Appeal Board denied an application for a canine-friendly restaurant and bar to adopt the mark “MUTTS” based on the likelihood of confusion with a restaurant and catering company registered as “MUTT’S BBQ.” Likewise, a restaurant was denied the rights to the mark “TacoLand” because of the likelihood of confusion with another restaurant already using the Spanish equivalent, “Taco Tierra.”
Once you’re satisfied your mark will not step on anybody’s identifiable toes, the next step is to begin using the mark.
This underscores a common misconception that to trademark something, you have to file an application. That’s not technically correct. As soon as a restaurant opens, they begin to accrue rights to the mark and the ability to prevent others from using a similar mark in ways that could cause confusion, at least in the same geographic area.
While filing an application with the USPTO is the key to significantly expanding those rights on a national scale, a new restaurant has many other priorities and expenses when getting started. On average, filing for a mark may cost around $1,500. If anything goes haywire, from issues with the USPTO to discovering a similar mark despite the best search efforts, costs can quickly add up to thousands of dollars to fight for a mark.
Once your restaurant has garnered some goodwill, recognition and the resources to afford to file, then it may be time to apply for registration—especially if franchising is a future goal.
Surveillance, the third leg of the stool, should begin and continue as long as you are using a mark. Another common misconception is that the USPTO is a trademark police force. Rather, the responsibility of protecting a mark primarily relies on ad hoc individuals keeping their eyes and ears open for potential problems.
Although you don’t have an absolute right to prevent every use of something similar, you may be able to enjoin a newcomer from using a mark that encroaches on yours. Sometimes a polite phone call or email request will do, while other scenarios require the threat of litigation from an experienced trademark lawyer to force a newcomer to drop the mark. If a junior user files an application that the USPTO finds troubling and likely to cause confusion, the Trademark Trial Appeal Board also allows the senior user to initiate a lawsuit with due process.
Overall, the USPTO provides trademarks rights as a tool, and it is up the trademark owner to wield that tool against potential infringers. By maintaining the three-pronged approach, your mark might just endure as long as Bass Brewery’s famous red triangle.
Paul Kruse is an attorney at Bone McAllester Norton and focuses his practice on intellectual property law. Paul helps hospitality clients protect their trademarks with high-quality, creative and comprehensive services, including trademark clearance, registration and policing. Paul has created the CoreFour Trademark Vigilance Program for small business owners, entrepreneurs, musicians and artists. In addition to trademark prosecution, enforcement and litigation support, Paul handles copyright, right of publicity and domain name matters that touch on trademark law.