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Trademark Tiff Motivates Seattle Restaurant to Change Its Name

One of my local joints, The Publican, is now called the Burgundian Tavern.


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.

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Reader Comments (4)

"ST" posted a comment, which for some reason wasn't published properly:

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.
August 13, 2012 | Registered CommenterMichael Atkins
I think ST is right -- but the Chicago restaurant could only get relief after it came to Seattle or otherwise proved it had trademark rights here. Once it did, the conflict would be mature, and the Seattle restaurant would need to change its mark to avoid the conflict. However, until then, there would be nothing more than a metaphysical dispute that wouldn't be ripe for a court to decide.
August 13, 2012 | Registered CommenterMichael Atkins
The reason that the dispute became serious is most likely due to the fact that the two establishments are known "craft beer bars." The claim to fame for each is their remarkable connection to quality breweries and uncanny selection. Both are known in beer circles across the country, on a short list of high quality beer bars. Therefore, when the focus for each is so narrow and similar, I get the challenge. Unfortunate, though I like the new name having frequented the original Publican in Chicago for years.

Thanks for the write up Mike!

August 13, 2012 | Unregistered CommenterDoug Reiser
Thanks for the write-up, and the comments. I respectfully disagree with one point, though, that "Chicago...could only get relief once it came to Seattle or otherwise proved it had trademark rights..." Doesn't Chicago's US federal reg. by its very nature confer rights nationwide, and thus, in Seattle (given that Seattle's use is junior)? Or, is that comment based on the lack of incontestability yet earned for Chicago's 2009 reg? Further, as we know, a TM owner has a duty to police and enforce rights to its mark; if you were Chicago's atty, wouldn't you advise your client to go after Seattle?
August 23, 2012 | Unregistered CommenterDC Lawyer

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