Preserving the right to nationally expand your brand

What restaurants can do

We see two key reasons why restaurants fail to take the simple step of seeking federal trademark registration. First, there is lack of knowledge. They do not realize the importance of federal registration or even know that it is available for a restaurant business. They may wrongly believe that trademark protection only applies to hot dogs and soap and other goods.

The second reason is fear. Fear that the process is difficult. Fear that it will be expensive. After all, they have heard that it costs thousands of dollars for inventors to file for a patent, and aren’t trademarks the same thing?  

In reality, the trademark application process is much easier and cheaper than the process for obtaining a patent. The application process involves the completion of a short online form available at the U.S. Patent and Trademark Office (www.uspto.gov).  

Legal assistance for filing and application is usually available for less than $1000, including the governmental filing fee charged by the Trademark Office. Additional fees may apply for responding to questions from the Trademark Office and for additional filings to obtain and maintain the final registration. All told, however, the cost is relatively small compared to the value gained by preserving the right to nationwide expansion and use of the new name.

To preserve your right to national expansion of your new restaurant brand, consider these best practices:

1. Select a distinctive name. Avoid names that are generic or merely descriptive if your goal is to create an exclusive national brand.  From perspective of trademark protection, Jungle Jim or Monkey Bar and more distinctive and enforceable that New York Grill or Chicago Bar.

2. Conduct a clearance search. The purpose of a search is to determine if the same or similar name is already used by or registered to others. Simple searches can be done online using a search engine such as Google or Bing and by search the trademark registration records as the Trademark Office.

3. Obtain a matching URL. Once you’ve settled on a few goods names it is wise to obtain the matching domain names to avoid have others learn about your plans and seize the domain name before you do.  Domain names are quickly and cheaply obtained through a registrar such as Go Daddy or Network Solutions.

4. File an Intent to Use application. You do not need to wait until later to apply for trademark registration.  You can file early based on a bona fide intent to use the name. One of the benefits of early application is that federal registration provides nationwide rights back to the date of filing. This can be critical to your plans for expansion in the crowded restaurant field.

5. Maintain and renew your registration. Once registration issues there are several key dates in the future when you will need to show continued use of the name and renew the registration to avoid lose of your registered rights. Be sure to track those dates for future action. Otherwise your registration—and the nationwide rights that go with it—can be lost.

6. Enforce your rights. The exclusivity afforded by your registered trademark is valuable and should be enforced to protect your brand and reputation. Fortunately, enforcement tends to be easier and cheaper if your objections to similar names are back by a valid federal registration. Often a clearly worded letter from your attorney will be enough.

By following these practices, you can help protect your right to expand your successful restaurant operations nationally, preserve your potential to license and franchise your brand, and enhance the value of your business to potential investors and acquisition partners.

Mark Partridge is the founder of Partridge IP Law, a Chicago-based law and IP strategy firm. He has worked in intellectual property law for more than 30 years and was named one of the top trademark lawyers in the 2012 edition of The International Who’s Who of Trademark Lawyers.