Introduction
Trademark terminology
Making it legal
Monitoring possible infringements
Staking a claim in cyberspace

Important Note
The information below is intended only to inform and not to be a substitute for the reader's seeking legal counsel. Any information given here should be examined by the reader's attorneys as to such information's applicability.

Introduction

Your restaurant's name is the most important part of your business. Restaurateurs spend untold hours and countless dollars crafting brand names to differentiate their products and services from those of the competition. The following provides tips on how to protect names, products and services with the appropriate trademark and service-mark registrations — a top priority for any restaurant operator.

Trademark terminology

The first step to protecting your name is deciding what can be used as a trademark or service mark. The most basic definition is that a trademark is a source of goods and a service mark identifies a source of services.

• Trademark: This registration applies to any word, name, symbol, device, letter or any combination used or intended to be used in commerce to identify and distinguish the goods of one manufacturer or seller from goods that are manufactured or sold by others; in short, a brand name.
• Service mark: This registration applies to any word, name, symbol, device, letter, slogan or any combination used or intended to be used in commerce to identify and distinguish the services of one provider from services provided by others and to indicate the source of the services.
• Copyright: This registration applies to any literary, musical, choreographic, pictorial, graphic, audiovisual works, etc., and, on rare occasions, recipes.

Restaurateurs generally trademark their restaurants' names, advertising slogans, product names and company logos. Once you decide what you can trademark or service mark, the next step is to legally protect your name.

Making it legal

As a restaurant operator, you must protect your name because someone else could misuse or abuse your name — thus harming your good name and the good will you have built.

The first step to protecting your name legally is to incorporate your restaurant with your state. The state will check to make sure that your name is not in use, at least in that state.

Second, trademark your name, company logo, etc., with your state. To register a mark in your state, contact the state secretary's office. (See the National Association of Secretaries of State for more information.) State applications generally cost less than federal registration and take less time for processing. For example, registering a trademark in Virginia will cost around $30 and take about a month. However, remember that state trademark registration only protects your mark within that state and that federal registration usually supercedes state registration claims.

Third, register your name under federal law with the U.S. Patent and Trademark Office (PTO) in Arlington, Virginia. The PTO has more requirements than registering at the state level.

• Restaurant operators should first conduct a thorough search for conflicting marks, which will help to ensure that the mark doesn't infringe on someone else's. The PTO estimates that there are some 15,700 active registrations relating to restaurant services.
• Next, restaurateurs should file an application. To obtain an application, call the PTO at (800) 786-9199 or visit its Web site to download one.

Restaurateurs with an eye toward international expansion should note that federal registration only provides protection within the United States and its territories. To seek protection in other countries, the operator must apply in those countries separately under the relevant laws.

Once you have registered your trademarks, you must further protect your restaurant's name by monitoring potential infringements.

Monitoring possible infringements

Just because you have trademarked your name doesn't mean that no one will use your name without your permission. Part of protecting your name, products and services is monitoring potential infringements. Keep in mind that tacit permissive uses can weaken your trademark. To monitor your mark:

• frequently surf the Internet for references
• encourage customers, franchisees and employees to report infringements to you
• send cease-and-desist letters to those who infringe on your marks
• put the matter before the courts as a last resort if the infringement continues.

Restaurant operators should manage their trademarks and service marks wisely and keep a sharp eye out for any possible misuses or abuses of those marks. Next, check out how to protect your name in cyberspace.

Staking a claim in cyberspace

The advent of the World Wide Web has opened a Pandora's box of legal questions in the intellectual-property arena. Because the Internet changes so quickly and is growing so rapidly, it's much easier to conduct infringement activity. To protect your Internet rights:

• Always use the name of your restaurant in exactly the same form, i.e., all capital letters and the same punctuation marks.
• Put SM or TM next to all service-marked or trademarked items or phrases.
• Use the ® symbol with each reference if the marks are federally registered.
• Add a disclaimer instructing browsers that the materials are copyrighted and should not be downloaded, copied or distributed for commercial gain.
• Implement a policing mechanism that will track your company's trademark to discover possible online infringements.

Because trademarks and service marks are often an integral part of the public's perception of the eating establishment, trademarking and service marking your products under federal and state registration can ensure a secure future for your restaurant's good name.

Last updated: June 4, 2001