A single location restaurant may be able to obtain federal service mark registration. The ability to acquire and maintain federal registration is important to a restaurant's identity and exclusivity. The most serious challenge to the ability to register is the requirement that the applicant show that the restaurant is engaged in interstate commerce.
Since the restaurant business is very competitive, a new concept must generally be shown to be successful before investors will invest in chain expansion. As a result, even the most successful restaurant chains began as a single location restaurant. Early protection for the restaurant's name and logo can prove essential in preventing imitators from either taking or diluting the single location restaurant's identity.
Federal protection for restaurants is typically obtained by filing a service mark application for class 42, for the services of providing food and drink. Of course, where the restaurant also sells, other separately identifiable products it may also separately seek trademark protection for those items. Such trademark protection will based upon meeting interstate commerce requirements for each trademark.
The service mark will usually include the restaurant's name, logo, or combination of name and logo. In order to obtain registrations for these, the restaurant must make an adequate showing to the Patent & Trademark Office that the applicant is doing business in interstate commerce. For restaurant chains which are operating in more than one state, this standard is easily shown. The single location restaurant as a practical matter must go to greater effort to show its affect on interstate commerce.
Two prominent cases, Lobo Enterprises Inc. v. The Tunnel Inc., 3 USPQ2d 1446 (CA 2 1987), and Larry Harmon Pictures Corp. v. The Williams Restaurant Corp., 18 USPQ2d 1292, (CAFC 1991), combine to give some indication of how interstate commerce may be successfully shown.
In Lobo, federal jurisdiction based upon interstate commerce was found to be proper in a lawsuit between two single use restaurants located in the same state over an unregistered mark, based upon extensive advertisement in travel guides and magazi nes having interstate circulation.The court in Williams rejected the use of a stringent formula requiring location on an interstate highway, greater than 50% of meals served to interstate travelers, or regular advertisements in out-of-state media. Of course, any single location restaurant which can exceed this onerous test should be able to convince the Patent & Trademark Office of its effect on interstate commerce.
The arguments between the majority and dissenting opinions in Williams, and from the opinion in Lobo, yield a checklist of items which could be used to show an effect on interstate commerce. First, collect articles from out of state or national publications which mention the restaurant. Second, try to have the restaurant listed in a travel guide or travel magazine. If you can show that you advertise to the interstate traveler, you will have a better chance of showing interstate commerce. Airline magazines, the Automobile Association and similar travel guides are suggested.
Since service mark use is shown by advertising, the use of interstate targeted advertising as specimens when applying for the federal service mark will give direct support in the application that the restaurant is doing business in interstate commerce. Interstate advertising should be maximized, limited only by an advertising budget. Other suggestions include the acceptance of credit cards and having a telephone reservation policy, since telephone and credit card use are so much a part of interstate commerce.
Where possible, and especially where the restaurant owner is intending the start of a national chain, the restaurant should be located near an interstate highway. At the extreme, and where the restaurant's theme allows, the restaurant management should attempt to construct some method for showing that out of state customers make up a significant portion of the restaurants business. A visitation register may go well in some establishments, while others may want to keep a record of out of state checks to directly show of interstate commerce.
Record keeping should begin early since the cases indicate that records generated after the filing of the service mark application are more likely to be held insufficient and imply an attempt at artificially manufacturing favorable records. It is therefore preferable for the evidence showing interstate commerce to have a date before an application for a service mark is made.
In protecting a restaurant, many other aspects can be protected other than the name. Design patents can be applied for new place settings, utensils, tables, chairs, and inside furnishings. Copyright protection can be had for sculptures, graphics, and fanciful patterns.
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