When I tell people that I represent clients in the restaurant industry, they often ask me why restaurants would need any kind of intellectual property protection. Often, they are surprised to learn that restaurants generally need the same types of intellectual property protection and enforcement as any other business.
Name protection is probably the first thing that comes to mind, and with good reason. Protecting the brand is important to maintaining good will, and naming disputes commonly arise, which can cost restaurants in litigation costs. New restaurants, and new restaurant locations, open frequently and potentially take on names similar (or even identical) to established restaurants. Federal trademark registration is available for restaurant names and, with a federal trademark registration, enforcement rights extend nationally. Having a federal trademark registration can be a powerful asset in acting against infringers and copycats, and it is best to obtain a registration as early as possible.
It is not just restaurant names that should be protected. The names of menu items, particularly well-known or important ones, may also qualify for and require trademark protection. For example, IHOP has a federal trademark registration for ROOTY TOOTY FRESH 'N FRUITY, and McDonald’s unsurprisingly has trademark registrations for BIG MAC. In addition to names, the Supreme Court has held that the look of a restaurant is protectable as trade dress.
Proactive steps can help restaurants avoid litigation costs. A restaurant can conduct a comprehensive trademark name search before investing in a name and with legal advice about whether a proposed name is protectable, can head off at least some such battles. For a search to be most valuable, it should be conducted before the investment and before the restaurant opens.
The sheer number of intellectual property lawsuits concerning the food service industry underscores the concerns and opportunities to restaurants. Seeking legal advice early in the new restaurant development process concept could be a recipe for maintaining the value of those assets.
Barry R. Lewin is a partner with the New York City based law firm Gottlieb, Rackman & Reisman, P.C. He is involved in all areas of litigation, prosecution, and licensing regarding patents, trademarks, and copyrights. Mr. Lewin focuses his practice on prosecution and litigation of patents in the mechanical and electronic arts, including medical devices, optics, telecommunications, material science, robotics and information technology, as well as a wide variety of consumer goods. For more information, please see www.grr.com.
Restaurants: Name Protection
by Barry Lewin