There is an old saying that imitation is the sincerest form of flattery. For example, the genre of the hard-boiled detective novel goes back to the work of writers in the 1920s like Dashiell Hammett and his immortal characters, Sam Spade and the Continental Op; and Carroll John Daly and his detectives, Terry Mack and Race Williams. Without them we wouldn’t have the likes of Mike Hammer and Phillip Marlowe, Travis McGee and Bulldog Drummond. Unfortunately, what might work in the world of literature doesn’t necessarily work in the world of business.
Take in point a certain new restaurant that recently opened up in Chicago’s historic Bronzeville neighborhood. Called Rosscoe’s House of Chicken and Waffles, the place offers, true to its name, that dubious piece of soul-food zeitgeist, fried chicken and waffles. I cannot say that I have ever tried it, but that isn’t the point. You see, it is not for crimes against the palate that the owners of Rosscoe’s were hauled into Federal court to answer, it was for the more mundane crime of trademark infringement.
You see, the original Roscoe’s House of Chicken and Waffles in Los Angeles, a place that is considered de rigor with the LA hip crowd, is alive and well and not at all happy that the name, its logo featuring a cartoon chicken in front of a waffle, the names for drinks and menu items have been compromised. “We’ll be suing them to the hilt,” declared Herb Hudson, the owner and founder of Roscoe’s in LA.
Suing them to the hilt is generally the first reaction once the swearing has subsided. Your company’s trademark (or service mark if you offer services rather than products) is the way your business is identified by the public and as such it is one of your most important assets. According to Title 15, Chapter 22, Subchapter 3, Paragraph 1127 of the U.S. Code:
The term “trademark” includes any word, name, symbol, or device, or any combination thereof—
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
The term “service mark” means any word, name, symbol, or device, or any combination thereof—
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.
Now, according to our friends at Harvard Law, just saying that something is a trade or service mark isn’t enough. To be considered a viable mark, the item in question has to meet certain criteria.
In order to serve as a trademark, a mark must be distinctive -- that is, it must be capable of identifying the source of a particular good. In determining whether a mark is distinctive, the courts group marks into four categories, based on the relationship between the mark and the underlying product: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic. Because the marks in each of these categories vary with respect to their distinctiveness, the requirements for, and degree of, legal protection afforded a particular trademark will depend upon which category it falls within.
Arbitrary or Fanciful. A mark with no logical relationship to the underlying product. For example, the Nike "swoosh" bears no inherent relationship to athletic shoes. These marks receive a great deal of protection since they are inherently unique and can easily identify a given product.
Suggestive. A mark that evokes or suggests a characteristic of the associated product. For example, the name "Log Cabin” suggests the woods and, perhaps, old fashioned breakfasts. However it does not actually describe the product. Like arbitrary or fanciful marks, suggestive marks are inherently distinctive and enjoy a great deal of protection.
Descriptive. A mark that describes a specific characteristic or quality of the associated product. Unlike arbitrary or suggestive marks, descriptive marks are not inherently distinctive and are protected only if they have acquired secondary meaning—when the public primarily associates that mark with a particular producer rather than the product—because since such marks are useful for describing the underlying product, giving a particular manufacturer the exclusive right to use the term could confer an unfair advantage. When trying to determine whether a given term has acquired secondary meaning, courts will often look to the following factors: (1) the amount and manner of advertising; (2) the volume of sales; (3) the length and manner of the term's use; (4) results of consumer surveys.
Generic. A mark that describes the general product category to which the associated product belongs. These marks have no legal protection since these marks describe a whole category of items. For example, Pen brand pens would not be protected under the law since that would give a single manufacturer control over use of a generic term, conferring a great a competitive advantage.
Once you know that your trademark qualifies for protection, there are two ways of going about acquiring that protection. You would have to be the first with the mark active in the market. That is, actually selling things—and using related sales and marketing collateral—with the mark attached to it. Coca-Cola, for example, wouldn’t have much of a trademark if the name and its associated stripe wasn’t on everything they sell, differentiating it from the myriad of other brown-colored caffeinated fizzy drinks on the market. The second way of doing it is a bit less hit-and-miss as regards being first in the marketplace. You can simply register your trademark with the U.S. Patent and Trademark Office. There will be a search for conflicts and as long as that comes up clean, the trademark is yours.
Now, as I said earlier, for your trademark to be enforced, you need to make sales of goods or services with the trademark attached. That is fine as far as it goes, as the owner of the trademark you have priority to use your mark and that will be protected by law. There is, however, a restriction in play here. This trademark priority is limited to the geographic area in which you do business along with any areas that you would be expected to expand into and any areas where the reputation of the mark has been established.
This is where things in the case of Roscoe’s Chicken and Waffles do get a tad sticky. Roscoe’s is a Southern California company and has been for years. One could expect it to develop a reputation within this area that would make it easy to sue some trademark interloper. However, that is not the case. Rosscoe’s, the establishment in Herb Hudson’s legal sights, is situated in Chicago. Normally, that wouldn’t be a problem: two local restaurants in two distant locales. Sure, all the copying on the part of Rosscoe’s founder, Darnell Johnson, is rather tacky, one would think the chicken and waffles universe is big enough to support more than one unique business identity, but there is really nothing illegal about it. What’s more, there is some history to take into account.
Hudson had moved to Los Angeles 30 years ago, opening the first Roscoe’s on Sunset Blvd. Over the years he opened four more in the LA area and is, by all rights, a local small business success story. Johnson approached Hudson about opening up a Roscoe’s in New York City. The deal never went through so, in 1998, Johnson added an extra ‘s’ and opened up the first Rosscoe’s East in Brooklyn. Since Hudson had no plans to open a restaurant in New York, he really didn’t care. He just didn’t see Johnson as a threat and, as Hudson predicted, Johnson’s restaurant didn’t last too long, closing its doors in 2006.
The same casual attitude didn’t apply to plans to open in Chicago. Hudson had his own sights on Chicago, planning to bring the original Roscoe’s Chicken and Waffles to the WindyCity by 2009. When he discovered that Johnson was planning to open up his Rosscoe’s Chicken and Waffles this year, 2008, he sued, believing that Johnson would “mess up my name over there!”
Now they are facing-off in Federal Court over trademark infringement or, in this case, trademark dilution. In the end, Johnson will probably change the name. He has already said that he likes Chicago’s House of Chicken and Waffles better, but that is not the point. The point is that none of this needed to happen in the first place. Whatever cache you might glean from riding the coat-tails of another business isn’t worth the legal hassles that you will, sooner or later, have to face. If you can’t bear to part with someone else’s trademark, buy a franchise (if you can). If not, then come up with something as unique and original as the business you want to open. It is better for your business and personally better for you. After all, how can you make your own mark in the world when you are riding the hard work of someone else.