protecting ip in the restaurant industry: trademarks and...

Presenting a live 90-minute webinar with interactive Q&A

Protecting IP in the Restaurant Industry:Trademarks and Brands, Copyrights,Licensing, and Performance Rights

1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific

TUESDAY, NOVEMBER 29, 2016

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Today’s faculty features:

1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific

Glenn S. Bacal, Managing Attorney, Bacal & Garrison, Scottsdale, Ariz.

Janet F. Satterthwaite, Partner, Potomac Law Group, Washington, D.C.

Steven S. Sidman, Founder and Managing Member, The Sidman Law Firm, Atlanta

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November 29, 2016 Webinar

5

Overview of IP issues in The USA inthe restaurant industry

Real life stories

Real life court cases and what wecan learn from recent disputes

Q&A

SpeakerTopic

Janet

Steve

Today’s DiscussionToday’s Discussion

Overview of IP issues in The USA inthe restaurant industry

Real life stories

Real life court cases and what wecan learn from recent disputes

Q&A

Steve

Glenn

Group

6

1. Trademarksgenerally

• Selecting and enforcinga strong name

• Logos• Trade dress• Menu items

2. Trademarksand business

• Ownership of IP• Licensing and investing

Overview of IP Issues in the USA in the Restaurant Industry

2. Trademarksand business

3. Trademarksand celebritychefs

4. Entertainmentand copyright

• Ownership of IP• Licensing and investing

7

Distinctiveness Clearance

Got a NAME? Four Key Elements to ConsiderGot a NAME? Four Key Elements to Consider

1. Trademarks generally

EnforcementRegistration

8

GeographicallyDescriptive

GeographicallyDescriptive

DescriptiveDescriptive

GenericGeneric • RESTAURANT• THE GRILL

• BOSTON GRILL• BAR HARBOR CAFE

• HEALTHY LIFESTYLE RESTAURANT• NOODLE SHOP

PLG

TEA

MD

egre

e of

dis

tinct

iven

ess

Deg

ree

of d

istin

ctiv

enes

s

LOW

ExampleMark type

Distinctiveness: Try to Choose an Inherently Strong MarkDistinctiveness: Try to Choose an Inherently Strong Mark

SuggestiveSuggestive

ArbitraryArbitrary

FancifulFanciful

• TACOLOGY

• saalna

• [Separate topic]Use of Chef’sName

Use of Chef’sName

• BUFFALO BILLIARDSPLG

TEA

MD

egre

e of

dis

tinct

iven

ess

Deg

ree

of d

istin

ctiv

enes

s

HIGH

9

Clearance: Do Your Due DiligenceClearance: Do Your Due Diligence

• Searching– Don’t get sued!

– Knockout– Full + Opinion– Internet– Special considerations

• Searching– Don’t get sued!

– Knockout– Full + Opinion– Internet– Special considerations

10

• “Goods and Services” Restaurant Services — Livemarks

• Almost 40,000 records in USPTO “live” database

• Cost is minimal

• Registration takes about 18 months on average

• Intent to Use option

Registration: Navigating the USPTO

• “Goods and Services” Restaurant Services — Livemarks

• Almost 40,000 records in USPTO “live” database

• Cost is minimal

• Registration takes about 18 months on average

• Intent to Use option

11

• Police against Infringers– Watch Notices– Internet searching– Cease and Desist Letters and Lawsuits

Enforcement: Be Vigilant

• Police against Infringers– Watch Notices– Internet searching– Cease and Desist Letters and Lawsuits

12

• Own the logo—assignment from designer• Register the logo with copyright Office• Register as Trademark

Got a LOGO?Got a LOGO?

• Own the logo—assignment from designer• Register the logo with copyright Office• Register as Trademark

13

Got an Awesome Design Concept? Consider Trade Dress

Recent application by KFC

The color(s) red and white is/areclaimed as a feature of the mark.The mark consists of a three-dimensional configuration of atower with angled roof on its frontface with red and white verticalstripes, and a panel of red andwhite vertical stripes on the sidewall of the rectangular building.The broken lines show theplacement of the mark inrelationship to the structure, butno claim is made to the structureidentified by the broken lines.

The color(s) red and white is/areclaimed as a feature of the mark.The mark consists of a three-dimensional configuration of atower with angled roof on its frontface with red and white verticalstripes, and a panel of red andwhite vertical stripes on the sidewall of the rectangular building.The broken lines show theplacement of the mark inrelationship to the structure, butno claim is made to the structureidentified by the broken lines.

14

"a festive eating atmosphere having interior dining and patio areasdecorated with artifacts, bright colors, paintings and murals. The patioincludes interior and exterior areas with the interior patio capable of beingsealed off from the outside patio by overhead garage doors. The steppedexterior of the building is a festive and vivid color scheme using top borderpaint and neon stripes. Bright awnings and umbrellas continue the theme.”

Two Pesos v. Taco Cabana*: A Cautionary Tale

* 505 U.S. 763 (1992)

15

Owner(REGISTRANT) Al Johnson'sSwedish Restaurant and ButikCORPORATION WISCONSIN 702Bay Shore Drive Sister BayWISCONSIN 54234

Description of MarkThe mark consists of goats on aroof of grass. The dotted lines inthe drawing are intended toindicate the location of the markand are not a feature of the mark.

Example Trade Dress: Goats on a Roof

Owner(REGISTRANT) Al Johnson'sSwedish Restaurant and ButikCORPORATION WISCONSIN 702Bay Shore Drive Sister BayWISCONSIN 54234

Description of MarkThe mark consists of goats on aroof of grass. The dotted lines inthe drawing are intended toindicate the location of the markand are not a feature of the mark.

16

• DID WE JUST BECOME BEST FRIENDS? (Two shots, one for you and one for a• friend. you can also leave a shot for a friend to redeem at a later date.)….$10• DIRTY MIKE AND THE BOYS. (Any two draft beers and a house shot!)….$14• HELP ME TOM CRUISE. (Spiced Rum, Ginger Beer, Vanilla, Bitters)…..$12• GREAT ODIN’S RAVEN. (Light rum, ginger beer, lemon) ….$8• MILK WAS A BAD CHOICE. (Vanilla Stoli, Vanilla Schnapps, Milk, Ice)….$10• MUGATU MULE. (Tequila reposado, lime, bitters, ginger beer)….$10• SHAKE AND BAKE. (Shaken whiskey and sour mix with a splash of ginger beer,• served with cherries and lime wedge)….$10• SMELLY PIRATE HOOKER. (Jalapeno Margarita, Stoli jalapeno, orange• juice, sour mix, Muddled jalapen, lime juice)….$12• GATOR DON’T PLAY NO SHIT. (Tequila, Orange Juice, Pineapple Juice,• Blue Curacao)…..$12• WE’RE GOING STREAKING! (Adult Kool Aid! Dont ask just get naked)…..$14• A WHALE’S VAGINA “San Diego” (Vodka, triple sec, orange juice,sloe gin)….$12• YOU’RE MY BOY BLUE! (Gin, Blue curacao, Sweet and Sour, Pineapple Juice)….$12

Got Menu Items? Menu/Drink Items and Rights of Publicity

Stay Classy New York Will Farrell-themed BarSample Entries

• DID WE JUST BECOME BEST FRIENDS? (Two shots, one for you and one for a• friend. you can also leave a shot for a friend to redeem at a later date.)….$10• DIRTY MIKE AND THE BOYS. (Any two draft beers and a house shot!)….$14• HELP ME TOM CRUISE. (Spiced Rum, Ginger Beer, Vanilla, Bitters)…..$12• GREAT ODIN’S RAVEN. (Light rum, ginger beer, lemon) ….$8• MILK WAS A BAD CHOICE. (Vanilla Stoli, Vanilla Schnapps, Milk, Ice)….$10• MUGATU MULE. (Tequila reposado, lime, bitters, ginger beer)….$10• SHAKE AND BAKE. (Shaken whiskey and sour mix with a splash of ginger beer,• served with cherries and lime wedge)….$10• SMELLY PIRATE HOOKER. (Jalapeno Margarita, Stoli jalapeno, orange• juice, sour mix, Muddled jalapen, lime juice)….$12• GATOR DON’T PLAY NO SHIT. (Tequila, Orange Juice, Pineapple Juice,• Blue Curacao)…..$12• WE’RE GOING STREAKING! (Adult Kool Aid! Dont ask just get naked)…..$14• A WHALE’S VAGINA “San Diego” (Vodka, triple sec, orange juice,sloe gin)….$12• YOU’RE MY BOY BLUE! (Gin, Blue curacao, Sweet and Sour, Pineapple Juice)….$12

17

• FRANK THE TANK. (A Pint Of Guinness & A Shot Of Whiskey)…..$10

• NEW FALL/WINTER DRINKS:

• SON OF A NUTCRACKER. (Fireball, Rum Chata, Nutella, Eggnog.)…..$14

• BUDDY’S PUMPKIN PIE. (Pumpkin Liquor, Vanilla Vodka, Nutmeg andCinnamon, shaken until

• perfect)…..$12

• THE ELF. (Maple Bourbon, Maple Syrup, Candy Cane Stir)…..$14

• THRONE OF LIES. (Cherry Vodka, Peppermint Schnapps, Sloe Gin,Peppermint Candy)…..$14

• HANSEL’S SO HOT RIGHT NOW. (Fireball, Cider Beer, Grenadine,Mudled Cherries)…..$12

Will Farrell-themed Drinks

• FRANK THE TANK. (A Pint Of Guinness & A Shot Of Whiskey)…..$10

• NEW FALL/WINTER DRINKS:

• SON OF A NUTCRACKER. (Fireball, Rum Chata, Nutella, Eggnog.)…..$14

• BUDDY’S PUMPKIN PIE. (Pumpkin Liquor, Vanilla Vodka, Nutmeg andCinnamon, shaken until

• perfect)…..$12

• THE ELF. (Maple Bourbon, Maple Syrup, Candy Cane Stir)…..$14

• THRONE OF LIES. (Cherry Vodka, Peppermint Schnapps, Sloe Gin,Peppermint Candy)…..$14

• HANSEL’S SO HOT RIGHT NOW. (Fireball, Cider Beer, Grenadine,Mudled Cherries)…..$12

18

– Who owns the mark?– Organic and messy growth of Restaurant Groups– LP’s and LLC’s Expansion to other markets– Have a Prenup!– Think about: Spin off products—cookbooks, retail food

products

2. Trademarks and Business

Got Partners or Investors?

– Who owns the mark?– Organic and messy growth of Restaurant Groups– LP’s and LLC’s Expansion to other markets– Have a Prenup!– Think about: Spin off products—cookbooks, retail food

products

19

• Pros: Revenue, brand extensionespecially to new cities

• Cons: Quality control is a burdenLicensing-

-OUTLicensing-

-OUT

Got a Licensing Opportunity?

• Pros: Revenue, brand extensionespecially to new cities

• Cons: Quality control is a burdenLicensing-

-OUTLicensing-

-OUT

20

Licensing INLicensing IN

• Pros: Ready-made trademark andbrand

• Cons: You are building a brand notowned by you; can lose the License

Got a Licensing Opportunity? [Cont’d]

• Pros: Ready-made trademark andbrand

• Cons: You are building a brand notowned by you; can lose the License

Franchising: theMegaLicenseFranchising: theMegaLicense

21

• Due Diligence for Investors– Trademark audit– Who owns the IP—What are you buying?

Got an Investment Opportunity?

• Due Diligence for Investors– Trademark audit– Who owns the IP—What are you buying?

22

• Use of own name as a trademark

• Sale of restaurant concept with your name vs. right touse own name down the road

Got a Celebrity Chef?Got a Celebrity Chef?

3. Trademarks and Celebrity Chefs

23

Celebrity Chefs: How Do They “Own” Their Marks?Celebrity Chefs: How Do They “Own” Their Marks?

• Jose Andres — filed in the name of Jose AndresCorporation

• Wolfgang Puck — filed in the name of Wolfgang PuckLicensing LLC

• Guy Savoy — filed in his own name

• Jose Andres — filed in the name of Jose AndresCorporation

• Wolfgang Puck — filed in the name of Wolfgang PuckLicensing LLC

• Guy Savoy — filed in his own name

24

• Recorded Music, Live Music

• Got the Big Game on the TV over the bar?

• Big Topic: beware!

Got Entertainment?Got Entertainment?

4. Entertainment and Copyright

25

Protecting IP in the Restaurant Industry:Trademarks and Brands, Copyrights,Licensing, and Performance RightsCopyright, Name & Likeness Rights and OtherNon-Trademark Considerations

General Considerations• In an increasingly chef-driven restaurant culture,

intellectual properties (in addition to a restaurant’sname, logo and trade dress) must be taken intoaccount, from both the owner-operator’s/investor’sand the chef’s point of view.

– Recipes– Menu contents and graphic design/layout– Chef’s name & likeness– Inventions & improvements

• Affected by copyright law (federal), trade secretslaw (federal and state), right of publicity, patent law(federal).

• Dealt with by contract, via various means.

• In an increasingly chef-driven restaurant culture,intellectual properties (in addition to a restaurant’sname, logo and trade dress) must be taken intoaccount, from both the owner-operator’s/investor’sand the chef’s point of view.

– Recipes– Menu contents and graphic design/layout– Chef’s name & likeness– Inventions & improvements

• Affected by copyright law (federal), trade secretslaw (federal and state), right of publicity, patent law(federal).

• Dealt with by contract, via various means.

27

Recipes Not protected under theCopyright Act, per se.

§102(a)’s list of original worksof authorship does not includerecipes.

§102(b): “In no case doescopyright protection for anoriginal work of authorshipextend to any idea, procedure,process, system, method ofoperation, concept, principle,or discovery, regardless of theform in which it is described,explained, illustrated, orembodied in such work.”

See Copyright Office CircularFL-122: “Copyright law doesnot protect recipes that aremere listings of ingredients….Copyright protection may,however, extend to substantialliterary expression—adescription, explanation, orillustration, for example—thataccompanies a recipe orformula or to a combination ofrecipes, as in a cookbook.”

Not protected under theCopyright Act, per se.

§102(a)’s list of original worksof authorship does not includerecipes.

§102(b): “In no case doescopyright protection for anoriginal work of authorshipextend to any idea, procedure,process, system, method ofoperation, concept, principle,or discovery, regardless of theform in which it is described,explained, illustrated, orembodied in such work.”

See Copyright Office CircularFL-122: “Copyright law doesnot protect recipes that aremere listings of ingredients….Copyright protection may,however, extend to substantialliterary expression—adescription, explanation, orillustration, for example—thataccompanies a recipe orformula or to a combination ofrecipes, as in a cookbook.”

28

Recipes, continued• “Tangible fixation” of independently copyrightable expression may be protectable

under copyright.– Particularly literary descriptions of recipes, ingredients, techniques and processes (e.g.,

in cookbooks, online, white/chalkboards, etc.).

• Protect by contract (individual contract with chef; employee handbook;confidentiality provisions + work-for-hire with alternative exclusive & perpetuallicense applicable to the “results & proceeds” of the engagement/employmentrelationship)

• Protect as actual trade secrets (determined by state law and, as of May 2016, federallaw: the Defend Trade Secrets Act, 18 U.S. Code § 1839).

– Generally defined as “all forms and types of financial, business, scientific, technical,economic, or engineering information, including… methods, techniques, processes,procedures, programs, or codes, whether tangible or intangible, and whether or howstored, compiled, or memorialized physically, electronically, graphically,photographically, or in writing if (A) the owner… has taken reasonable measures to keepsuch information secret; and (B) the information derives independent economic value,actual or potential, from not being generally known to, and not being readilyascertainable through proper means by, another person who can obtain economic valuefrom the disclosure or use of the information.”

• Issues of attribution/plagiarism are business and ethical considerations; not legalones, per se.

• “Tangible fixation” of independently copyrightable expression may be protectableunder copyright.

– Particularly literary descriptions of recipes, ingredients, techniques and processes (e.g.,in cookbooks, online, white/chalkboards, etc.).

• Protect by contract (individual contract with chef; employee handbook;confidentiality provisions + work-for-hire with alternative exclusive & perpetuallicense applicable to the “results & proceeds” of the engagement/employmentrelationship)

• Protect as actual trade secrets (determined by state law and, as of May 2016, federallaw: the Defend Trade Secrets Act, 18 U.S. Code § 1839).

– Generally defined as “all forms and types of financial, business, scientific, technical,economic, or engineering information, including… methods, techniques, processes,procedures, programs, or codes, whether tangible or intangible, and whether or howstored, compiled, or memorialized physically, electronically, graphically,photographically, or in writing if (A) the owner… has taken reasonable measures to keepsuch information secret; and (B) the information derives independent economic value,actual or potential, from not being generally known to, and not being readilyascertainable through proper means by, another person who can obtain economic valuefrom the disclosure or use of the information.”

• Issues of attribution/plagiarism are business and ethical considerations; not legalones, per se.

29

Additional CopyrightConsiderations: MenusMenus are themselvescopyrightable (selection andorder; design/layout).

In a digital world, though,infringement is all too easy.

30

Additional CopyrightConsiderations: Cookbooks• Key issues

– Ownership & control– Restaurant-focused?– Chef-driven?– Revenue sharing

• Key issues– Ownership & control– Restaurant-focused?– Chef-driven?– Revenue sharing

31

Name & Likeness Rights• Obtained by contract,

generally as a license.

• In chef-drivenconcepts, crucial formarketing purposes.

• Reserved rights of chefoutside of the formalrestaurant setting areoften heavilynegotiated (cookbooks,personal appearances,TV shows, productendorsements, etc.).

• Obtained by contract,generally as a license.

• In chef-drivenconcepts, crucial formarketing purposes.

• Reserved rights of chefoutside of the formalrestaurant setting areoften heavilynegotiated (cookbooks,personal appearances,TV shows, productendorsements, etc.).

32

Additional Considerations: CollateralMaterial & Associated Products• Often, in the course of

a restaurant’s existence,new products arecreated to enhance thecustomer experience,or to create newrevenue streams, or toboost profit margin.

• Again, the key issuesare ownership andcontrol.

• Determined bycontract and applicablelaw.

• Typical examples areconsumer goods, suchas sauces and otherprepared foods (see,e.g., Emeril Lagasse,Mario Batali, WolfgangPuck, Rachael Ray, etal.; see also Frontera,Rao’s, Margaritaville, etal.).

• New-era examples:Tock’s “ticketing”reservation system;Crucial Detail’s service-and tablewear designsfor The Alinea Group

• Often, in the course ofa restaurant’s existence,new products arecreated to enhance thecustomer experience,or to create newrevenue streams, or toboost profit margin.

• Again, the key issuesare ownership andcontrol.

• Determined bycontract and applicablelaw.

• Typical examples areconsumer goods, suchas sauces and otherprepared foods (see,e.g., Emeril Lagasse,Mario Batali, WolfgangPuck, Rachael Ray, etal.; see also Frontera,Rao’s, Margaritaville, etal.).

• New-era examples:Tock’s “ticketing”reservation system;Crucial Detail’s service-and tablewear designsfor The Alinea Group

33

Collateral Materials:Examples

34

And Finally, A Bit More About theUse of Music….• Under §106(4) of the Copyright Act, public performance

of musical compositions is an exclusive right of thecopyright owner.

• In the case of restaurants, the restaurant is deemed to bethe performer, not the act itself (or the service provider).

• Music can be directly licensed from the copyright owner,but that can be an administrative nightmare.

• Options: blanket license from the performing rightsorganizations (ASCAP, BMI, SESAC, GRM), or all-indigital service (e.g., Pandora, SiriusXM, MoodMedia,Muzak, et al.).

• Be wary of the fact that digital delivery licenses do notcover live performances.

• Under §106(4) of the Copyright Act, public performanceof musical compositions is an exclusive right of thecopyright owner.

• In the case of restaurants, the restaurant is deemed to bethe performer, not the act itself (or the service provider).

• Music can be directly licensed from the copyright owner,but that can be an administrative nightmare.

• Options: blanket license from the performing rightsorganizations (ASCAP, BMI, SESAC, GRM), or all-indigital service (e.g., Pandora, SiriusXM, MoodMedia,Muzak, et al.).

• Be wary of the fact that digital delivery licenses do notcover live performances.

35

Some Practical TakeawaysSome Practical Takeaways

Glenn S. Bacal & MarissaKovary

Bacal & Garrison Law [email protected]

480-245-6233November 29, 2016

©2016 Bacal & Garrison LawGroup

Closer than you think . . .The Internet has changed everything for restaurants—but it is clear that the law, the USPTO and the Courtshaven’t caught up yet.

Similarly named restaurants physically separated by many miles may now be presentedone after another in search engine listings.

Concurrent use or consents to use have often been a solution in the past – but these maynot work as reliably in this new age.

Historically, concurrent use proceedings have resulted in the grant of concurrentregistrations that cover different geographic areas.

But recent concurrent use restaurant cases illustrate the growing difficulties of the newage. See Southwestern Mgmt. v. Ocinomled, Ltd., 115 U.S.P.Q.2d 1007 (T.T.A.B. June 11,2015) (precedential) (concurrent use registration sought for the mark –DELMONICO’S–for the same description of services—restaurants of any type—this was denied due tolikelihood of confusion), aff ’d on appeal, No. 2015-1939 (Fed. Cir. June 15, 2016).

37Bacal & Garrison Law Group

Concurrent Use Cases Demonstrate the Problems of theInternet Era: Southwestern Mgmt. v. Ocinomled, Ltd. A Three-Ring Circus—The Parties:

Chef Emeril Lagasse and his related company Emeril's Food of Love Productions, LLC (“EFOL”) thatoperates DELMONICO STEAKHOUSE in Las Vegas and DELMONICO in New Orleans.

Ocinomled, Ltd. (“OL”) operates DELMONICO’S in New York City.

The Applicant who triggered the fight was Southwestern Mgmt. They operate four restaurantslocated in upstate New York and one in Orlando, Florida.

Applicant first applied to register the mark DELMONICO’S, in typed form, for“Restaurant services,” in Class 43. But this was unsuccessful.

Applicant then sought a concurrent-use registration excluding a 40-mile radius aroundNew York City’s Empire State Building and a 40-mile radius around the New OrleansSuperdome and the Stratosphere in Las Vegas. And the two other Delmonico’s wereallowed to argue against the concurrent use registration that was being sought.

A Three-Ring Circus—The Parties: Chef Emeril Lagasse and his related company Emeril's Food of Love Productions, LLC (“EFOL”) that

operates DELMONICO STEAKHOUSE in Las Vegas and DELMONICO in New Orleans.

Ocinomled, Ltd. (“OL”) operates DELMONICO’S in New York City.

The Applicant who triggered the fight was Southwestern Mgmt. They operate four restaurantslocated in upstate New York and one in Orlando, Florida.

Applicant first applied to register the mark DELMONICO’S, in typed form, for“Restaurant services,” in Class 43. But this was unsuccessful.

Applicant then sought a concurrent-use registration excluding a 40-mile radius aroundNew York City’s Empire State Building and a 40-mile radius around the New OrleansSuperdome and the Stratosphere in Las Vegas. And the two other Delmonico’s wereallowed to argue against the concurrent use registration that was being sought.


Why was Southwestern’s concurrent use application denied?

Goods & Services: There was a disconnect between what Applicant wassaying about how it differed from the two others, and what it wasactually claiming in its application.

Applicant claimed its services were distinguishable from those offered by theother two Delmonico’s because it specialized in Italian food and steak offered atmoderate prices.

Applicant had filed however broadly for “restaurant services.”

The Board found the services to be identical to those offered by the otherDelmonico because an application for “restaurant services” includes within itsscope “restaurants of all kinds and all price ranges.”

To be consistent, Applicant should have applied for a registration thatspecifically defined its services in a way that would have avoided confusion withthe types of restaurants owned by Opposers.

Goods & Services: There was a disconnect between what Applicant wassaying about how it differed from the two others, and what it wasactually claiming in its application.

Applicant claimed its services were distinguishable from those offered by theother two Delmonico’s because it specialized in Italian food and steak offered atmoderate prices.

Applicant had filed however broadly for “restaurant services.”

The Board found the services to be identical to those offered by the otherDelmonico because an application for “restaurant services” includes within itsscope “restaurants of all kinds and all price ranges.”

To be consistent, Applicant should have applied for a registration thatspecifically defined its services in a way that would have avoided confusion withthe types of restaurants owned by Opposers.

Bacal & Garrison Law Group 39

Why was Southwestern’s concurrent use application denied? Historical Fame: The long historical use of the mark and its related

goodwill belonged to none of the parties involved in the concurrent useproceeding, but it still had an effect on the analysis.

Delmonico’s was a longstanding mark used in connection with a historicrestaurant that was believed to have commenced business in the 1820s buthad since closed.

About a decade after the historic restaurant closed, in the 1990s OL’spredecessor opened a restaurant under the mark DELMONICO’S in thepremises previously occupied by the historic restaurant.

OL did not claim to own the goodwill of the historic Delmonico's restaurant(even though it references the historical restaurant throughout its website).

The Board found that “OL enjoys a peculiar form of renown, because thepress and public are very willing to conflate the identities of OL's restaurantwith that of the historic Delmonico previously located at the same address.”

While “[g]oodwill arising from operations of the historic Delmonicorestaurant does not, in any legal sense, inure to OL's benefit . . , [a]t the veryleast, it resulted in virtually instantaneous name recognition.”

Historical Fame: The long historical use of the mark and its relatedgoodwill belonged to none of the parties involved in the concurrent useproceeding, but it still had an effect on the analysis.

Delmonico’s was a longstanding mark used in connection with a historicrestaurant that was believed to have commenced business in the 1820s buthad since closed.

About a decade after the historic restaurant closed, in the 1990s OL’spredecessor opened a restaurant under the mark DELMONICO’S in thepremises previously occupied by the historic restaurant.

OL did not claim to own the goodwill of the historic Delmonico's restaurant(even though it references the historical restaurant throughout its website).

The Board found that “OL enjoys a peculiar form of renown, because thepress and public are very willing to conflate the identities of OL's restaurantwith that of the historic Delmonico previously located at the same address.”

While “[g]oodwill arising from operations of the historic Delmonicorestaurant does not, in any legal sense, inure to OL's benefit . . , [a]t the veryleast, it resulted in virtually instantaneous name recognition.”


What can we learn from Southwestern Mgmt. v. Ocinomled, Ltd.?

The importance of tailoring your Goods & Services descriptioncarefully, especially if you are entering a crowded market.

Where possible, if you are adopting a mark that at one time wasfamous, try to use it at or near the place where it achieved fame.

In this case, one of the parties benefited from the strength of thehistorical mark and the associated goodwill in the eyes of the publiceven though there was no business relationship between the party andthe historic restaurant. There was built-in brand equity, even withoutany real chain of title back to the historical use.

The importance of tailoring your Goods & Services descriptioncarefully, especially if you are entering a crowded market.

Where possible, if you are adopting a mark that at one time wasfamous, try to use it at or near the place where it achieved fame.

In this case, one of the parties benefited from the strength of thehistorical mark and the associated goodwill in the eyes of the publiceven though there was no business relationship between the party andthe historic restaurant. There was built-in brand equity, even withoutany real chain of title back to the historical use.


Concurrent use agreements can work in certain situations but not necessarily in asituation where the senior user is considered to have sufficient national fame.

CASE COMPARISON In Southwestern Mgmt. v. Ocinomled,

Ltd., both of the senior users’ restaurantswere found to have a substantial degreeof renown throughout the US.

OL benefitted from the historical fameof an unaffiliated restaurant at the samelocation.

EFOL’s DELMONICO mark, while itselfnot famous, benefited from itsconnection to Emeril Lagasse, whomade successful use of his fame and hisaccess to publicity in promoting EFOL’sDELMONICO restaurants.

In Boi Na Braza, LLC v. Terra SulCorporation a/k/a Churrascaria Boi NaBrasa, 110 USPQ2d 1386 (T.T.A.B. 2014)(precedential), the junior user wasawarded concurrent use registration forthe entire country except NJ and NY.

The junior user applied for the mark BOINA BRAZA, in standard character form,for restaurant and bar services. The Sul,used the mark CHUsenior user, TerraRRASCARIA BOI NA BRASA in NewJersey.

The Board found that because the “NewYork restaurant scene’s embrace issufficiently broad to reach Newark,” aNew Jersey restaurant’s area ofconcurrent use included New York Cityand, by extension, New York State.

In Southwestern Mgmt. v. Ocinomled,Ltd., both of the senior users’ restaurantswere found to have a substantial degreeof renown throughout the US.

OL benefitted from the historical fameof an unaffiliated restaurant at the samelocation.

EFOL’s DELMONICO mark, while itselfnot famous, benefited from itsconnection to Emeril Lagasse, whomade successful use of his fame and hisaccess to publicity in promoting EFOL’sDELMONICO restaurants.

In Boi Na Braza, LLC v. Terra SulCorporation a/k/a Churrascaria Boi NaBrasa, 110 USPQ2d 1386 (T.T.A.B. 2014)(precedential), the junior user wasawarded concurrent use registration forthe entire country except NJ and NY.

The junior user applied for the mark BOINA BRAZA, in standard character form,for restaurant and bar services. The Sul,used the mark CHUsenior user, TerraRRASCARIA BOI NA BRASA in NewJersey.

The Board found that because the “NewYork restaurant scene’s embrace issufficiently broad to reach Newark,” aNew Jersey restaurant’s area ofconcurrent use included New York Cityand, by extension, New York State.


What could the senior user in Boi Na Braza, LLC havedone differently to better protect its mark? By geographically limiting itself, the senior user ran

the risk of getting boxed in to a specific area.

To avoid being boxed in, do not think small! Expandthe reach of your advertising, and utilize somenational advertising where possible.

By geographically limiting itself, the senior user ranthe risk of getting boxed in to a specific area.

To avoid being boxed in, do not think small! Expandthe reach of your advertising, and utilize somenational advertising where possible.


One may not be enough. . . What is the standard for use in interstate commerce?

Problems for single location restaurants.

A single location restaurant was not considered to be operatingin interstate commerce even though it was located 3 miles froman interstate highway and had an online presence. See Doctor’sAssociates Inc. v. Janco, LLC, Opposition No. 91217243 (T.T.A.B.January 7, 2016) (non-precedential).

In Doctor’s, the Board noted that the applicant did not submitany evidence that the restaurant was listed in any travel orrestaurant guide; and no advertising was submitted.

What is the standard for use in interstate commerce?

Problems for single location restaurants.

A single location restaurant was not considered to be operatingin interstate commerce even though it was located 3 miles froman interstate highway and had an online presence. See Doctor’sAssociates Inc. v. Janco, LLC, Opposition No. 91217243 (T.T.A.B.January 7, 2016) (non-precedential).

In Doctor’s, the Board noted that the applicant did not submitany evidence that the restaurant was listed in any travel orrestaurant guide; and no advertising was submitted.


The New Age of AdministrativeSkepticism - Consent Agreements

Agreements between restaurants and food/drink providerswith the same or similar names, and that purport to allow bothparties to get registrations, won’t be rubber stamped any more.

See In re Bay State Brewing Co., 2016 TTAB LEXIS 46 (T.T.A.B. Feb.25, 2016) (precedential).

Board affirmed Section 2(d) refusal of the mark TIMETRAVELER BLONDE for “beer” [BLONDE disclaimed], in view ofthe registered mark TIME TRAVELER for “beer, ale and lager,”despite consent agreement between applicant and registrant.

The geographical limitations in the agreement were inadequatebecause the parties agreed to allow use of their respective marksin the same territories. The registrant was free to use its mark inthe entirety of the applicant’s territory.

The applicant filed an application for a nationwide registrationwhen it should have sought a concurrent use registration.

Agreements between restaurants and food/drink providerswith the same or similar names, and that purport to allow bothparties to get registrations, won’t be rubber stamped any more.

See In re Bay State Brewing Co., 2016 TTAB LEXIS 46 (T.T.A.B. Feb.25, 2016) (precedential).

Board affirmed Section 2(d) refusal of the mark TIMETRAVELER BLONDE for “beer” [BLONDE disclaimed], in view ofthe registered mark TIME TRAVELER for “beer, ale and lager,”despite consent agreement between applicant and registrant.

The geographical limitations in the agreement were inadequatebecause the parties agreed to allow use of their respective marksin the same territories. The registrant was free to use its mark inthe entirety of the applicant’s territory.

The applicant filed an application for a nationwide registrationwhen it should have sought a concurrent use registration.


The New Age ofAdministrative Skepticism –

Surnames Versus Marks Just because your restaurant bears your surname, and your name isn’t a common one, there may still

be increasing barriers to federal registration.

When determining what is primarily merely a surname, the Board is not just looking at whether thename would clearly be recognized as a surname but also considering, in the case of less commonnames, whether it is a surname of a family known to be involved in the exact business.

See In re Eximius Coffee, LLC, Serial No. 86262060 (T.T.A.B. Sept. 27, 2016) (precedential). The Board affirmed a Section 2(e)(4) refusal of the rare surname “ALDECOA,” for coffee, finding the mark to

be primarily a surname.

The applicant's website traced the Aldecoa's family history in the coffee business and the packagingcontained the phrase “Premium Family Coffee.”

This evidence showed that the applicant was “educating consumers as to the surname significance ofALDECOA” and was “persuasive of consumer perception of ALDECOA as a surname.”

Applicant’s use of ALDECOA as a surname outweighed the rareness of the surname and its minimal publicexposure in the media.

Just because your restaurant bears your surname, and your name isn’t a common one, there may stillbe increasing barriers to federal registration.

When determining what is primarily merely a surname, the Board is not just looking at whether thename would clearly be recognized as a surname but also considering, in the case of less commonnames, whether it is a surname of a family known to be involved in the exact business.

See In re Eximius Coffee, LLC, Serial No. 86262060 (T.T.A.B. Sept. 27, 2016) (precedential). The Board affirmed a Section 2(e)(4) refusal of the rare surname “ALDECOA,” for coffee, finding the mark to

be primarily a surname.

The applicant's website traced the Aldecoa's family history in the coffee business and the packagingcontained the phrase “Premium Family Coffee.”

This evidence showed that the applicant was “educating consumers as to the surname significance ofALDECOA” and was “persuasive of consumer perception of ALDECOA as a surname.”

Applicant’s use of ALDECOA as a surname outweighed the rareness of the surname and its minimal publicexposure in the media.


MaintainingLegacy Brands

A restaurant’s trademarks can be forfeited through non-use, no matterhow well-known it may have previously become in the minds ofconsumers.

When engaging in rebranding efforts or acquiring other entities,companies need to assess whether to retain their rights in brands in orderto prevent third parties from later trading on their goodwill and namerecognition.

See Ziebarth v. Del Taco, LLC, 2015 TTAB LEXIS 324 (T.T.A.B. Mar. 31, 2015)(precedential) (fast food chain lost fight to retain trademark rights toname of a no longer operating subsidiary, allowing an individual whowanted to revive use of the name of the chain register it instead).

A restaurant’s trademarks can be forfeited through non-use, no matterhow well-known it may have previously become in the minds ofconsumers.

When engaging in rebranding efforts or acquiring other entities,companies need to assess whether to retain their rights in brands in orderto prevent third parties from later trading on their goodwill and namerecognition.

See Ziebarth v. Del Taco, LLC, 2015 TTAB LEXIS 324 (T.T.A.B. Mar. 31, 2015)(precedential) (fast food chain lost fight to retain trademark rights toname of a no longer operating subsidiary, allowing an individual whowanted to revive use of the name of the chain register it instead).


Ziebarth v. Del Taco, LLC Del Taco acquired the popular Naugles restaurant in 1988 but then shut it

down in 1995. Petitioner sought a registration for NAUGLES in 2010, but the registration

was refused as likely to cause confusion with Del Taco’s still validNAUGLES registration. Petitioner appealed, arguing that Del Taco hadabandoned the brand.

During the cancellation proceeding, Del Taco’s witness testified that thecompany stopped using the Naugles mark as the actual name of anyrestaurants from 1995 until 2010, when Petitioner filed his registration.

To show purported continued use of NAUGLES, Del Taco pointed toarchived images of its website from 2003 to 2006, and referenced an alleged“secret menu” previously offered only in Naugles restaurants that Del Tacocustomers can order from, as well as use of the mark on clothing.

Del Taco acquired the popular Naugles restaurant in 1988 but then shut itdown in 1995.

Petitioner sought a registration for NAUGLES in 2010, but the registrationwas refused as likely to cause confusion with Del Taco’s still validNAUGLES registration. Petitioner appealed, arguing that Del Taco hadabandoned the brand.

During the cancellation proceeding, Del Taco’s witness testified that thecompany stopped using the Naugles mark as the actual name of anyrestaurants from 1995 until 2010, when Petitioner filed his registration.

To show purported continued use of NAUGLES, Del Taco pointed toarchived images of its website from 2003 to 2006, and referenced an alleged“secret menu” previously offered only in Naugles restaurants that Del Tacocustomers can order from, as well as use of the mark on clothing.


Ziebarth v. Del Taco, LLC:

The Board held that: Use of the Naugles service mark on clothing did not support a finding of

continued use for restaurant services.

The archived website images merely recounted the history of the mergerand were clearly not advertisements for services rendered.

The sale of food items previously sold at Naugles restaurants does notconstitute current use of the Naugles mark by Del Taco. There was noevidence that the mark appeared on advertising materials, that Del Tacopromoted the Naugles secret menu, or that the mark was itself referredto in connection with the secret menu.

The Board held that: Use of the Naugles service mark on clothing did not support a finding of

continued use for restaurant services.

The archived website images merely recounted the history of the mergerand were clearly not advertisements for services rendered.

The sale of food items previously sold at Naugles restaurants does notconstitute current use of the Naugles mark by Del Taco. There was noevidence that the mark appeared on advertising materials, that Del Tacopromoted the Naugles secret menu, or that the mark was itself referredto in connection with the secret menu.


Lesson Learned from Ziebarth v. Del Taco, LLC:How to avoid a determination of abandonment of a mark?

To be used as a service mark, the markmust be used in the advertising or saleof the services and the services must berendered. Del Taco had not renderedrestaurant services under the mark since1995.

To be used as a service mark, the markmust be used in the advertising or saleof the services and the services must berendered. Del Taco had not renderedrestaurant services under the mark since1995.


History Shouldn’t Be a Mystery Clarity of ownership is a huge issue for restaurants. There is usually a lot of

uncertainty if the business expands, falls apart, or merges with or is acquired byanother business. These issues are often ignored at the front end when everyoneis excited about the new restaurant.

If you are going to claim ownership through others, don’t pay lip service to chainof title issues.

Keeping good records (aka evidence if you get into a dispute) is becomingincreasingly important in trademark disputes.

Ziebarth v. Del Taco, LLC demonstrates the importance of keeping good records.In the cancellation proceeding, the witness who testified on behalf of Del Tacoregarding continued use had no personal knowledge of relevant events prior to2009, even though the mark at issue had been owned and used since 1988. Histestimony was based on conversations with legal counsel and others he wasunable to name. While his testimony was not thrown out, the court did not give itany significant probative value.

Clarity of ownership is a huge issue for restaurants. There is usually a lot ofuncertainty if the business expands, falls apart, or merges with or is acquired byanother business. These issues are often ignored at the front end when everyoneis excited about the new restaurant.

If you are going to claim ownership through others, don’t pay lip service to chainof title issues.

Keeping good records (aka evidence if you get into a dispute) is becomingincreasingly important in trademark disputes.

Ziebarth v. Del Taco, LLC demonstrates the importance of keeping good records.In the cancellation proceeding, the witness who testified on behalf of Del Tacoregarding continued use had no personal knowledge of relevant events prior to2009, even though the mark at issue had been owned and used since 1988. Histestimony was based on conversations with legal counsel and others he wasunable to name. While his testimony was not thrown out, the court did not give itany significant probative value.


Jumping On The Bandwagon to Litigation

Jumping on popular trends, and cashing in on popular TV andmovie titles, may not be such a good idea.

Applications to register THE WALKING DEAD for themedrestaurant services, as well as for coffee, cigarettes and smokingaccessories, glassware, bottled water and t-shirts, are currentlybeing opposed by the creator of “The Walking Dead” comics onwhich the popular TV show is based.

My Big Fat Greek Gyro, a small restaurant franchise, had torebrand to The Simple Greek after discovering a company alreadytrademarked MY BIG FAT GREEK. The restaurant tried to savemoney by not performing a trademark clearance search. In theend, it had to hire a rebranding specialist and develop newadvertising material; it also lost any goodwill associated with itsprior name.

Jumping on popular trends, and cashing in on popular TV andmovie titles, may not be such a good idea.

Applications to register THE WALKING DEAD for themedrestaurant services, as well as for coffee, cigarettes and smokingaccessories, glassware, bottled water and t-shirts, are currentlybeing opposed by the creator of “The Walking Dead” comics onwhich the popular TV show is based.

My Big Fat Greek Gyro, a small restaurant franchise, had torebrand to The Simple Greek after discovering a company alreadytrademarked MY BIG FAT GREEK. The restaurant tried to savemoney by not performing a trademark clearance search. In theend, it had to hire a rebranding specialist and develop newadvertising material; it also lost any goodwill associated with itsprior name.


The Decline of Precedent as Power Getting one registration in block letters may no longer

be the ticket to additional registrations for the samemark with additional elements that it once was.

In re Cordua Rests., Inc., 823 F.3d 594(Fed. Cir. 2016)(affirming refusal of CHURRASCOS in stylized formfor “restaurant and bar services; catering,” even thoughapplicant had a registration for CHURRASCOS instandard character form for the same services).

Getting one registration in block letters may no longerbe the ticket to additional registrations for the samemark with additional elements that it once was.

In re Cordua Rests., Inc., 823 F.3d 594(Fed. Cir. 2016)(affirming refusal of CHURRASCOS in stylized formfor “restaurant and bar services; catering,” even thoughapplicant had a registration for CHURRASCOS instandard character form for the same services).


How menu items can get you sued: Even if your recipe is not the same as that of a trademark owner, using the same

name on your menu can get you in a pickle.

A pecan pie with bourbon and chocolate chips is commonly referred to as aderby pie and is one of the most popular dishes served during the KentuckyDerby.

Kern’s Kitchen in Kentucky obtained a registration for DERBY-PIE in 1969.Kern’s original recipe is made without bourbon and contains walnuts instead ofpecans.

Kern’s is not shy about protecting its rights. Restaurants that have beenchallenged by Kern’s include:

Claudia Sanders Dinner House (menu item now reads: “Claudia's Kentucky Pie - MadeWith Chocolate Chips and Pecans”)

Science Hill Inn (menu item now reads: “Chocolate Pecan Pie”) White Light Diner (changed menu item to “‘I Can’t Call it Derby Pie’ Pie” but was sued

by Kern’s)

Even if your recipe is not the same as that of a trademark owner, using the samename on your menu can get you in a pickle.

A pecan pie with bourbon and chocolate chips is commonly referred to as aderby pie and is one of the most popular dishes served during the KentuckyDerby.

Kern’s Kitchen in Kentucky obtained a registration for DERBY-PIE in 1969.Kern’s original recipe is made without bourbon and contains walnuts instead ofpecans.

Kern’s is not shy about protecting its rights. Restaurants that have beenchallenged by Kern’s include:

Claudia Sanders Dinner House (menu item now reads: “Claudia's Kentucky Pie - MadeWith Chocolate Chips and Pecans”)

Science Hill Inn (menu item now reads: “Chocolate Pecan Pie”) White Light Diner (changed menu item to “‘I Can’t Call it Derby Pie’ Pie” but was sued

by Kern’s)


SUMMARY It’s a changing trademark world for restaurants. Ignoring the need for a sophisticated trademark strategy

has been the downfall for many restaurants If no thought out strategy about concurrent use, you could

end up like the losing Delmonico's If don’t really observe trademark requirements – like use in

interstate commerce rather than merely having a singlelocation with no interstate advertising – you can lose in theTrademark Office and vis a vis competitors who challenge you

If you reach agreements that don’t make sense to trademarkexaminers – like the consent agreement for Time Travelers –you will end up having your arrangement rejected

It’s a changing trademark world for restaurants. Ignoring the need for a sophisticated trademark strategy

has been the downfall for many restaurants If no thought out strategy about concurrent use, you could

end up like the losing Delmonico's If don’t really observe trademark requirements – like use in

interstate commerce rather than merely having a singlelocation with no interstate advertising – you can lose in theTrademark Office and vis a vis competitors who challenge you

If you reach agreements that don’t make sense to trademarkexaminers – like the consent agreement for Time Travelers –you will end up having your arrangement rejected


You need to pay attention to: What things am I using that might be protected? (menu

items, slogans, colors, trade dress, website, designs, etc.) What things am I using that others might have already

claimed rights in? How do I preserve and document the rights I may have

in trademarks, trade dress and copyright? How do I learn from the mistakes of others? What effect will the Internet and the shrinking

marketplace in the eyes of consumers have on mychoices of intellectual property?

You need to pay attention to: What things am I using that might be protected? (menu

items, slogans, colors, trade dress, website, designs, etc.) What things am I using that others might have already

claimed rights in? How do I preserve and document the rights I may have

in trademarks, trade dress and copyright? How do I learn from the mistakes of others? What effect will the Internet and the shrinking

marketplace in the eyes of consumers have on mychoices of intellectual property?


Thank You

Janet F. Satterthwaite

Potomac Law Group

202-486-1578

[email protected]

Steven S. Sidman

The Sidman Law Firm

404-920-0121

[email protected]

Glenn S. Bacal

Bacal & Garrison Law Group

480-245-6233

[email protected]

protecting ip in the restaurant industry: trademarks and...

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