AVOID COSTLY BRANDING MISTAKES
The following story is fictional. The names and places have been changed to protect the innocent and naive. However, the scenario depicted occurs frequently (see our other posts – Damsel In Distress and A Juicy Tale, involving real live situations), and can be easily prevented.
The story of Nonna’s Kitchen (fictional)
As a child, Maria loved to cook. She was a proud third generation Italian-American. Her grandparents immigrated from the town of Varese in the Italian Alps to the United States in 1946 after the end of World War II. They settled in the small town of Clinton, Indiana where Maria’s grandfather worked as a coal miner. Maria’s grandmother, her “Nonna” was an amazing cook. Maria would spend hours in the kitchen cooking with her Nonna and learned many of her best recipes. After graduating from culinary school at the prestigious Sullivan University School of Culinary Arts in Louisville, Kentucky, Maria moved to Nashville, Tennessee and opened her own restaurant in the Hillsboro Village area near Belmont University and Vanderbilt University. To honor her grandmother, who had passed away during Maria’s last year of culinary school, she named her new restaurant “Nonna’s Kitchen”.
The restaurant was an overnight success! It seemed like the people of Nashville couldn’t get enough of the savory pasta dishes that Maria had been cooking with her Nonna since she was a little girl. The restaurant was full almost every night. After five years in operation in Nashville, Nonna’s Kitchen was mentioned by Giada De Laurentiis on the Food Network. After that, things went crazy! Maria was approached by a group of angel investors who wanted to partner with her to franchise her restaurant nationwide. It seemed like everything was falling into place and Maria’s wildest dreams of sharing Nonna’s Kitchen with all of America were about to come true. But Maria was about to discover that some branding mistakes made by her early on could stand in the way of making her dream a reality.
About a month after the mention by Giada, Maria received a letter from an attorney in New York City. The letter advised her that his client was the owner of a U.S. Trademark Registration for the mark Nonna’s Kitchen. They had been operating an Italian restaurant also called Nonna’s Kitchen in the Little Italy neighborhood of New York City for over a decade. On the advice of their attorney, they registered the mark Nonna’s Kitchen with the U.S. Trademark Office shortly after opening. The U.S. Trademark Registration granted them exclusive rights to use the name Nonna’s Kitchen for restaurant services in the United States. After the mention by Giada, the owners of the New York Nonna’s Kitchen received several calls from confused patrons who believed Giada was referring to their restaurant. The cease and desist later was sent shortly after.
How to avoid costly branding mistakes
Maria was heartbroken. She had spent five years and thousands of dollars building her Nonna’s Kitchen brand. Now it looked like all of that brand building was wasted and she would have to change the name of her restaurant. What could she have done to prevent this?
Vet you chosen name by conducting a Trademark Clearance Search
When adopting a name for a new product or service, the first thing that anyone should do is conduct a trademark clearance search. A trademark clearance search is a systematic search for registered or unregistered (common law) marks that: (1) are the same or similar to the mark you wish to use; (2) are being used by others anywhere in the country; (3) are being used for the same or similar product or service; and (4) would likely cause confusion in the mind of the customer. While there are resources available for you to conduct a trademark clearance search on your own, it is better to leave the searching, and the determination of whether there is a liklihood of confusion to skilled trademark attorney. Had Maria conducted a trademark clearance search prior to adopting the name Nonna’a Kitchen, she almost certainly would have been aware of the existence of the previous trademark registration for Nonna’s Kitchen. Armed with that information, Maria could have chosen another name that still honored her grandmother, but didn’t infringe on another’s registered trademark.
Register your Mark and Register it Early!
Let’s assume for a moment that the owners of the New York Nonna’s Kitchen did not register their mark with the U.S. Trademark Office. Under this scenario, Maria may still be entitled to obtain registration of Nonna’s Kitchen with the U.S. Trademark Office. However, if the New York Nonna’s Kitchen was in operation before the filing of Maria’s trademark application, they may still be entitled to continue using the mark, but their use would be limited to the geographic area of prior use. So, effectively, with her U.S. trademark registration, Maria would be entitled to use the Nonna’s Kitchen name throughout the United States with the exception of New York City, where the New York Nonna’s Kitchen would retain rights as a senior user. Had she filed for registration before the New York Nonna’s Kitchen begain operation, she would have been able to block their usage too. By registering the mark early, Maria would be entitled to exclude any other uses of the mark Nonna’s Kitchen that don’t pre-date the filing of her trademark application. This is a huge benefit for someone with a potentially national brand!
Enforce your Registered Mark!
The owner of a U.S. trademark registration has a legal duty to police the marketplace for infringement of its trademark. If the owner fails to police the mark, it risks losing the protection granted by the trademark registration. Affordable trademark watch services are available to search for unauthorized uses of your mark as well as attempts to register the same or similar marks. Many instances of infringement are unintentional and, more often than not, can be resolved without the need for expensive litigation.
Invaluable Protection for your Brand
The protection provided to your brand by a U.S. Trademark registration can be worth millions. What is the value of the golden arches logo to McDonald’s? The value of the swoosh to Nike? Marks that achieve such iconic status are probably worth millions of dollars. But, like you, they started somewhere. For Steve Jobs and Apple Computers, it was in a garage. Imagine if Jobs had not taken action to protect the Apple marks? Protect your brand before it’s too late! Contact us to see how we can help!
