Trademark Tiff Motivates Seattle Restaurant to Change Its Name
One of my local joints, The Publican, is now called the Burgundian Tavern.
Why?
A trademark problem. Apparently, they tussled with a Chicago restaurant of the same name soon after opening.
The Seattle owner called the whole thing “an unfortunate mess,” and a writer reported the establishment “had already spent more money on lawyers than made him comfortable.”
Two things come to mind. First, there’s seemingly little chance of confusion between a restaurant in Chicago and a restaurant in Seattle, even if they have the same name. And unless the Chicago restaurant has some sort of presence here, its trademark rights probably would be junior to the Seattle restaurant’s unless and until the Chicago restaurant started doing business here — notwithstanding its federal registration.
Second is the practical reality that fighting a trademark fight is a financial drain and big distraction for a new business. Rights aside, it’s just too big a pain for most new business owner to fight — even if he or she can win.
The take-away is that new trademark owners should do their homework. Hit Google and the U.S. Patent and Trademark Office’s database. Is anyone out there using your contemplated mark to sell anything that resembles what you intend to sell? Even if there are no identical hits, remember the standard for trademark infringement isn’t “identicality”; it’s “likelihood of confusion.” That means even similar marks paired with similar goods or services can get a new trademark owner in trouble. Since courts usually resolve conflicts between trademark owners by applying a simple rule called “the first to use wins,” later adopters usually lose these fights. In other words, they’re the ones that need to change their trademarks.
A little homework on the front end — before signs are ordered, advertising is purchased, and customers start to learn your name — can help a new business avoid trademark trouble down the road.
Michael Atkins
in Federal Trademark Registration, Seattle Updates
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Reader Comments (4)
If my understanding of Dawn Donuts (267 F.2d 358) is correct, Chicago restaurant would have priority of use over Seattle restaurant by virtue of its federal registration, as long as Chicago registered before Seattle began its use. (Chicago couldn't get an injunction until it moved into Seattle, but its use would still be senior.) Chicago registered in 2009 (with a use date in 2008). Seattle changed its name three months after opening, presumably in 2012, considering the date of the news article, so Seattle's use seems to be junior. Geography aside, the services and mark are identical, so likelihood of confusion seems to be, well, rather likely.
Thanks for the write up Mike!
Doug