HOW CAN I PROTECT THE NAME OF MY RESTAURANT?
By Brian Krantz
Sassoon & Cymrot LLP
Restaurant owners often go to great effort and expense to choose a name or logo that both fits the theme of the restaurant and that its customers will easily remember. A successful restaurant will soon develop a reputation, and the goodwill associated with its name or logo can have significant value. Besides protecting itself and its customers against knockoffs, the restaurant’s ability to protect its name will preserve its value, and therefore is important, both to its owners and to potential investors or buyers. How, then, can a restaurant owner protect the valuable reputation and goodwill in the name and/or logo from being stolen or diluted by a competitor?
One answer is to register the name or logo as Service Marks with the United States Patent and Trademark Office (PTO). Upon registration of a Service Mark, the restaurant can legally prevent marks that are identical or confusingly similar from being used by anyone else in connection with other restaurants (or, more broadly, for the service of providing food and drink for consumption). With certain exceptions, registration with the PTO will protect the mark throughout the United States, both preventing its use by local competitors and establishing a priority right to use the mark in other geographical locations if the owners wish to expand through franchising, etc. Registration in the United States will also assist the restaurant to protect its name and/or logo in many other countries around the world.
The protection provided by registration of the restaurant’s name or logo will be limited to the restaurant business and similar businesses that provide food and drink for consumption – for example, taverns and bars. If, however, a restaurant also sells packaged food products under its registered name and/or logo, whether retail over-the-counter or on-line, or wholesale through commercial outlets such as supermarkets, registration of the restaurant’s Service Mark will not protect against competitors using a similar mark for similar sales of other food products. As a practical matter, a name or logo that is associated with food products sold separately by a restaurant can be protected only by separately registering the name or logo as a Trademark.
Registering Service Marks and Trademarks involves providing the PTO extensive information about the mark and its owners, including how the mark is used, when it was first placed in use, and specimens of the mark as used. The PTO will examine the application to ensure that the mark cannot be confused with other registered marks, and, upon approval of the application, will publish the mark for possible opposition. Final registration typically takes a year or more from the date of filing of the application. It can be useful, therefore, to apply for registration before the mark is actually placed in use. In such cases, however, the owner will be required to certify actual use of the mark within three years of registration.