Protecting The Trade Dress of Your Restaurant
Article contributed by James M. Smedley, Ellenoff Grossman & Schole LLP
When it comes to restaurants, first impressions are everything.
From the moment a potential customer walks in the door, they’re taking in every detail of your establishment—the ambiance, the menu, the décor—and making a split-second decision about whether they’ll stay and whether or not they would come back a second, third or more times. That’s why it’s so important to make sure that your restaurant’s trade dress is protected. But what is trade dress, and how can you protect it?
What is Trade Dress?
Trade dress is a type of intellectual property that covers the overall appearance of a business’s products or services. For restaurants, this can include everything from the layout and design of the dining room to the uniforms worn by servers. In order for trade dress to be eligible for protection, it must be distinctive enough to serve as a source identifier for the business. In other words, it must be recognizable to potential customers as being associated with your restaurant. If you see the golden arches, you know you’re at a McDonalds. And you would likely know exactly where you were without looking at the sign if the staff at your local buffalo wing spot were sporting tight fitting white shirts and orange shorts.
How to Protect Your Restaurant’s Trade Dress
There are two main ways to protect your restaurant’s trade dress: through federal trademark registration or through state common law (also known as a, “Common Law Trademark”).
Federal Trademark Registration
Federal trademark registration is the stronger of the two protections and offers several benefits, including:
- The exclusive right to use your trade dress throughout the United States, which gives you the legal right to exclude others from making use of that trade dress;
- The legal presumption that you own the trade dress and have the exclusive right to use it;
- The ability to file suit in federal court against anyone who uses your trade dress without permission;
- The ability to record your registration with the U.S. Customs and Border Protection (USCBP) to prevent imported goods that infringe on your trade dress from entering the country; and
- The ability to use “Circle R” ( ® ) after your registered trademark.
To register your restaurant’s trade dress with the U.S. Patent and Trademark Office (USPTO), you will need to file a comprehensive trademark application that includes:
- A drawing of your trade dress;
- A description of your trade dress;
- The products or services with which you will use your trade dress; and
- The date on which you first used your trade dress in commerce.
It should be noted that federal trademark protection can only be obtained if the services are provided in interstate commerce, since the federal government can only regulate interstate commerce, not intrastate commerce. Typically, interstate commerce requires provision of services in two or more states, however, with respect to restaurants, this can be satisfied if it is clear that patrons from two or more states are serviced by a restaurant in a single spot.
Federal registrations are good for an initial 10 year period from registration, and can be renewed indefinitely, so long as the trade dress continues to be used in interstate commerce.
State Common Law Protection
If you choose not to register your restaurant’s trade dress federally, you can still receive some protection under state common law. However, state law protection is more limited than federal protection and does not offer all the benefits. Some of the key differences between federal and state protection include:
- There is no exclusive right to use your trade dress under state law; anyone can use it unless they’re using it in a way that would cause confusion among consumers;
- You do not have the legal presumption of ownership under state law; you will need to prove that you own a superior claim to the trade dress in court;
- You typically will need to bring suit against infringers in state court, rather than federal court; and
- You cannot record your state law rights with the U.S. Customs and Border Protection, meaning that your ability to limit importation of infringing goods is limited.
State law protection may be sufficient if you only operate your restaurant within one state or if you have no plans to expand beyond state borders anytime soon. However, if you think there’s even a chance you might do business in multiple states or countries down the road, federal registration is always going to offer more comprehensive protection. In fact, having the federal registration can be used as a first step to filing an international trademark registration under the Madrid Protocol, which provides a pathway for trademark registration in up to 129 countries.
When it comes to protecting your restaurant’s trade dress, you have two main options: federal trademark registration or state common law protection. Federal trademark registration offers more comprehensive protection and should be considered if there’s even a chance you might do business outside of your home state at some point in the future. However, if you’re only likely to operate within the borders of a single state, state law protection may be sufficient for now.
James M. Smedley is a member at Ellenoff Grossman & Schole LLP in 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. James Smedley can be reached via email at [email protected] or by phone at 212-370-1300
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