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By Joel I. Rosenblatt, Attorney at Law
Mr. Rosenblatt, a Registered Patent Attorney with the U.S. Patent and Trademark Office, practices in the commercial law of technology and the Internet and the law of patents, trademarks, and copyrights. He is a Florida Supreme Court Certified Mediator, a Florida Bar Approved Mediator for Computer Law Disputes, certified as a Mediator and Arbitrator for the U.S. District Court for the Middle District of Florida and is admitted to all U.S. District Courts for Florida. Any questions or comments may be directed to Mr. Rosenblatt at (321) 727-7626; FAX: 727-8209 or by email to jirosenblatt@earthlink.net
What’s In a Name?
Othello said, he who takes my purse steals trash while he who takes my name leaves me poor indeed. Juliet, taking a contradictory tone said, Romeo, forsake thy name; a rose by any other name would smell as sweet. In modern trademark terms, Othello could have been speaking of a strong and perhaps famous trademark, whose named possessed great value, even claiming the strongest protection against dilution. Juliet, on the other hand, might have been speaking of a generic or no-name mark, incapable of distinguishing its bearer, in this case Romeo, from any other balcony climber. But by reading the play, we know that it was the strength of the name that distressed Juliet, who turned out to be a sophisticated purchaser, more interested in the goods than the source of origin, the hated house of the Montagues.
As those who regularly read this column, the strength of the trademark is its name or “branding” as commonly said, that consumers recognize and which drives sales of products made under the auspices of that trademark. We said auspices because it is not important any goods bearing a trademark are made in fact by the trademark owner, but only that the trademark proprietor exercise quality control before the trademarked goods are placed in commerce. However,
branding, much like evolution, can occur at different places for different people but at the same time.
Which brings us to the point of our story. It is when two businesses in different locations and serving separate or distinct markets, legally use the same or similar trademark at the same time, each developing legal rights in that same mark, that the potential for trademark conflict arises. The result, where the associated product is indistinguishable in the market except for its trademark recognition, is more of what Othello would have avoided and less than would have concerned fair Juliet.
To set the scene, we are in fair Viera where two food services converge. One calling itself “Onions of Perlos” is a small family Greek restaurant serving Greek. Specialities like moussaka, stuffed grape leaves, stuffed pitas, souvlaki, and Greek salad. The other calling itself “Onions of Perlos” is a nationwide chain, which started in Galveston, Texas and is now spreading over the southwest and southern United States. The chain has a Greek motif, serving on a buffet Greek and other salads and offering Greek and other foods including some of our better known Greek favorites. Onions of Perlos, the chain, had filed a successful trademark application and its name now has become a registered trademark serving as constructive knowledge of the chain’s rights to “Onions of Perlos.”
Armed with its trademark registration and a building permit for a new location in fair Viera of all places, its advance team, while not looking for a Greek restaurant, sees “Onions of Perlos” the family place and is so happy about the food, they tell everyone at corporate headquarters it’s best Greek food ever and makes the chain’s Greek food taste like frozen, not fresh. These are fighting words to the chain’s sales team, destined to upset the civil peace. As there is always someone who sees evil in competition, so it is with our chain’s attorney, who, goaded by sales and thinking like a trademark attorney, says the common people of Viera will be falsely enticed to enter the family place thinking they are getting the quality product of the chain and costing the chain some small amount of revenue.
As every trademark attorney likes an easy kill, and as the power of our law resides in an incontestable registration, a cease and desist letter is sent and an infringement action is started. Responding to the lawsuit with the common sense expected of a small business owner, our family Onions of Perlos, says the service styles are different. The chain serves food buffet style and ours is a restaurant where the menu service is personal. Nice try family business but it won’t work against a registration and something more is needed. For that, our family business must look elsewhere, as it is obvious the similarity of the trademarks and the food services are so close, that likelihood of confusion is inevitable, as the ensuing civil strife.
As in every story, there is a turning point. In ours it is when our chain attorney seeking to gild the lily, accuses our family restaurant of intentionally taking the chain’s Onions of Perlos trademark, to palm off its low caste food as the high quality of the chain, and threatens to take not only the profits of the family restaurant but the profits lost to the chain by the misleading use of the chain’s trademark.
Some people never know when to shut up, and so it was in the case of the chain’s attorney. When our family Onions of Perlos heard the accusation of intentionally taking the trademark, he said “how can this be? We have been using this name for our Viera restaurant for over twenty years, and even though we don’t have a trademark registration, we have been using Onions of Perlos longer than they and we must have some rights.
Will common sense prevail? How can our family restaurant, being the exclusive user of Onions of Perlos in the Viera area and building name recognition and branding for its small menu style Greek food service, keep its name and identity?
The answer lies in a concurrent use proceeding, a little known or used corner of the trademark law that comes into play only to avoid the harsh and inequitable consequences of stealing the good name (Onions of Perlos), of another (in this case our family restaurant), who has used the same mark prior to the date of the filing of the trademark application for Onions of Perlos, by the registered trademark owner, in this case, the chain.
It’s a case for reconciliation but not worthy of the judgment of a Solomon. However, the equitable considerations have been known to try the patience of some very patient district court judges. What the judge will be asked is to review the evidence of the times of continuous use of the Onions of Perlos with the goods or services provided by our family restaurant and most importantly, the separate location in which such continuous use was provided. Our judge will then fashion a remedy, allowing concurrent use for our family restaurant, based on its proprietary use in separate location, in our case Viera. However, our family restaurant will enjoy its exclusive privilege only in the limited area of Viera, and opposite to our Romeo’s exile from Verona, will be ordered not to venture outside of Viera.
Next month we deal with the law of cyber squatting and how the long arm of the law can reach out and grab you through the internet.
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Joel I. Rosenblatt is state Supreme Court certified and available for mediation and arbitration. He practices as a registered patent attorney in patents, trademarks and copyrights. Specific areas of practice include commercial law related to electronics, computers, data processing, telecommunications, materials and mechanical engineering, the Internet and entertainment and in the development and licensing of technology and creative works. As Intellectual Property and Licensing Counsel for Fortune 200 corporations, he has acquired numerous patents for electronics and computer related inventions, and has prepared and negotiated design, development and distribution agreements for software, telecommunications, electronic technology, and creative works. As a logistics attorney, he has provided counsel and representation in the field of customs, logistics services, and in loss and damage claims.
Mr. Rosenblatt is available for mediation and arbitration in the fields of general law, intellectual property, entertainment, and technology law, and in logistics law and loss and damage claims. Emphasizing technology and the arts, he serves a wide range of intellectual property and commercial needs for individual and business clients. Mr. Rosenblatt, as a senior level attorney can provide clients easy access and quick turnaround.
Education and Professional Affiliations:
Mr. Rosenblatt holds a Bachelor of Electrical Engineering Degree from the New York Polytechnic University, an MBA from the Wharton School of the University of Pennsylvania, and a JD from the Catholic University of America Law School.
Mr. Rosenblatt is a Registered Patent Attorney with the U.S. Patent and Trademark Office and a member of the Florida and New York State Bars. Admitted to practice in the Court of Appeals for the Federal Circuit, the United States Court of Appeals for the 11th Circuit, the United States Court of International Trade and the United States District Courts for the Northern, Southern, and Middle Districts of Florida. Florida Supreme Court Certified for Circuit Court Mediation and approved by the Florida Bar as a Mediator of Computer Law Disputes. Mr. Rosenblatt has completed Florida Supreme Court Certified Arbitration Training and is certified as a Mediator and Arbitrator in the United States District Court for the Middle District of Florida. jirosenblatt@earthlink.net . |
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