One would be hard pressed to find a restaurateur that did not know the importance of brand recognition. When one hears names like Nobu, Jean-Georges, Carmine’s and Eataly, it instantly conjures up in the mind the delectable cuisines provided at these establishments. The name of a restaurant is well known to be an important piece of intellectual property for owners to protect.
Once inside one of these establishments however, while the food may be amazing, the menus themselves can be less unique. Dry aged New York strip steaks, bigeye tuna sashimi, wedge salads and tiramisu. All sound delicious, but there’s nothing that stands out with these menu entries. And while these staples and standards are what many restaurant-goers would expect to find, these same individuals frequently have their interest piqued by an unknown signature dish or cocktail.
Hopefully you are reading this with a Cronut® in one hand and Frappuccino® in the other thinking what this has to do with anything. Because, in fact, these signature items can frequently be protected, just as both the Cronut® and the Frappuccino® are registered trademarks of their respective owners, preventing use by their competitors.
The Cronut®, a donut shaped pastry made from croissant-like dough and fried to perfection, was invented in 2013 by Dominique Ansel of Dominque Ansel Bakery in New York City, and quickly became a huge hit, even becoming one of TIME magazine’s best inventions of 2013. Copycats were quick to follow, but Ansel was able to secure the federal trademark registration in the delectable food, preventing others from calling their offerings Cronuts® or even names that would be confusingly similar to the registered mark. Sure, others can fry croissant-dough in the shape of a donut, but they cannot call it a Cronut®, which is what the average consumer is looking for.
The Frappuccino®, as everyone knows, is a line of blended ice coffee drinks that generally consist of a coffee or crème base and are blended with flavorings and ice to create incredibly tasty and energizing beverages. And just like with the Cronut®, Starbucks’ trademarked beverage cannot be sold as a Frappuccino® by any other company. They can sell flavored ice coffees, but not a Frappuccino®.
The ability to protect the names of specialty consumables extends beyond just donuts and coffee. Alcoholic beverages and cocktail names can be registered, such as Sazerac® and Dark n’ Stormy®, which are registered trademarks of their owners. So to can condiments, such as the hot sauces from Bayou Gotham® (e.g., Ruby Rebelle®) or salsas like La Fundidora®. And this continues all the way down to the end of the menu, with registrations being made on desserts, such as Applebees® Triple Chocolate Meltdown® or any number of Ben & Jerry’s® ice cream flavors, like Pecan Resist®.
Beyond names themselves, trademarks can cover a variety of other aspects for signature dishes. In fact, even the shape of foods can be protected. Hershey has a trademark registration for the shape of its famous Hershey’s Kisses®, as does Nestle with its KitKat® bar. Bubba Foods LLC has a trademark on the shape of its uncooked Bubba Burger®, which is not a traditional round or square burger.
Ultimately, the analysis of whether something can be registered as a federal trademark boils down to this question: does the proposed mark (e.g., word, logo, shape) act as an identifier of the source of the related goods or services? In other words, when a consumer sees the mark, does it tell the consumer where the good or service comes from. If the answer is yes, then there is a chance the signature dish can be registered as a trademark.
Registering a trademark with the United States Patent and Trademark Office (USPTO) comes with several advantages, including injunctive relief, statutory damages in the cases of counterfeit goods or services, and the possibility of being able to recover attorney’s fees from the infringing party. Additionally, if maintained properly, the term of a trademark registration is indefinite, giving mark owners long lasting enforceable intellectual property rights.
Better yet, as a company’s brand grows, there are options for creating a holding company for the marks, which will then license the rights back to the restaurants and any other licensees, creating both potential tax benefits as well as ways to protect and commoditize the marks separate from the restaurant.
Of course, this does not mean that you should aim to have a menu consisting exclusively of branded content. There are plenty of times the customer just wants a good old fashion hamburger and fries. But if you do have a magical entry that’s stirring up a craze, it might be time to speak with an intellectual property attorney about how to secure and commoditize that signature dish.
Amanda M. Fugazy is a partner at Ellenoff, Grossman & Schole in New York City. Amanda is the head of the firm’s Labor and Employment group, and has a focus on the restaurant and hospitality industry. Amanda offers a variety of services to the industry, including working with her clients to ensure that they are in compliance with state and federal laws and regulations.
James M. Smedley is a member of the Firm and serves as head of the firm’s Intellectual Property and Technology law group. Mr. Smedley’s practice has focused on strategic counseling of companies with respect to protecting and enforcing their intellectual property rights, both domestically and internationally. Representative matters include trademark and patent prosecution, brand protection and enforcement, intellectual property licensing, anti-counterfeiting counseling and privacy/cybersecurity counseling.
Amanda M. Fugazy (afugazy@egsllp.com) and James Smedley (jsmedley@egsllp.com) can be reached via phone at 212-370-1300
