While I serve clients in a wide variety of industries, I’m always a little extra excited to work with new restaurants.  It is a difficult and competitive industry, without a doubt.  But seeing someone succeed and being able to assist in that is especially rewarding.  There are also some unique considerations for restaurant trademarks of which new/future owners should be aware.

Is a Restaurant Trademark Registration Needed?

The vast majority of businesses need to look into obtaining a trademark registration.  But there are some cases where getting a registration might not make as much sense.  You may recall that you can acquire some trademark rights, called “common law” rights, just by using a name in commerce.  For some restaurants, this might be a sufficient way of establishing your trademark rights.  Getting a federal registration grants you additional rights, but not every restaurant will necessarily need those rights.

How do you know whether you should get a trademark registration for your restaurant name?  You should consult with a trademark attorney regarding your specific case, as always.  But here are the main reasons you would want to obtain a federal registration:

1. To add new locations, expand to new geographic areas;
2. To license your restaurant name to others or create a franchise located in different geographic areas;
3. You think someday you might want to sell your restaurant;
4. You worry about website confusion with others using a similar restaurant trademark in a different market.

Of course, one or more of these items will apply to the majority of new restaurants, cafes, and bars.  But if an owner wants to open a standalone store and is not worried about adding new locations, expanding geographically, or selling the business, then they may not necessarily need a federal registration.

On the other hand, all restaurant owners should still have a trademark attorney conduct a search to ensure their restaurant name does not infringe on the rights of others.  Someone could have a trademark registration for a similar restaurant name already.  In that case, you would not have the right to open your restaurant using your name, even if they don’t have a location in your area.  Their registration gives them exclusive rights to the name, even in parts of the country they are not currently located.

Food Service vs. Food Products

Let’s talk about another important issue should you decide to file an application for your restaurant trademark.  This is a mistake that I have seen many DIY application filers make.  It is the distinction between offering a service under your restaurant name vs. offering a product.

Here’s a real-life example that I have seen.  The owner wanted to open a Mexican cuisine restaurant.  The main specialty of the restaurant was going to be tacos.  So when the owner filed his trademark application, he said that he would be using his restaurant trademark in connection with “tacos.”  Seems straightforward enough, right?  Well unfortunately this was a mistake that ended up costing him the application.

The problem with what he did was that he was not selling branded tacos under his trademark.  Instead, he was providing restaurant services, as well as bar and catering services.  Yes, there were tacos on the menu.  But they were not branded under the restaurant name as if you were to purchase them in the frozen foods section of a grocery store.  As a result, we could not save that application, and had to file a new one.  An experienced trademark attorney would not make this mistake and working with one up front would have saved this owner hundreds of dollars and months of wasted time.

Want Your Trademarks Done as “Well” as Your Steaks or Burgers?

It’s “rare” that I attempt to pull off a pun like that, I promise.  But what is not rare is the quality and personal attention that my clients receive in dealing with their trademark matters.  If you are opening a restaurant, or already have one but has not looked into protecting your restaurant trademark, please call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.