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August 30th, 2017
Boston Restaurant Could Not Enforce Geographically Descriptive Trademark Against Celebrity Chef
In a closely watched trademark battle with implications for food, beverage and other industries, a federal court has found for celebrity chef and television personality Christopher Kimball and his new media company, CHRISTOPHER KIMBALL'S MILK STREET. An allegedly competing business, MILK STREET CAFÉ, had sued CHRISTOPHER KIMBALL'S MILK STREET, arguing that Kimball's use of CHRISTOPHER KIMBALL'S MILK STREET was likely to cause confusion with MILK STREET CAFÉ. (The two businesses are located on historic Milk Street in Boston's North End neighborhood.) The court's decision provides important information about the strengths and weaknesses of marks deploying geographic indicators. Here's a summary.
Mark Epstein opened MILK STREET CAFÉ in 1981 and received a federal registration for the mark in 2011 for "restaurant and catering services." In December of 2015, Kimball, who was aware of Epstein's trademark registration at the time, filed applications for MILK STREET KITCHEN and CHRISTOPHER KIMBALL'S MILK STREET KITCHEN for an array of goods and services including cooking instruction, cookware, and providing a website, printed publications, and digital media and television and radio programs about cooking. After being contacted by Epstein, Kimball dropped "KITCHEN" from the mark, but argued that, as his company also was located on Milk Street, he should be able to continue to use the street name. Epstein disagreed and sued. Kimball argued his use was permissible. Kimball also counterclaimed — challenging the validity of Epstein's mark on the ground it was geographically descriptive.
Primarily geographically descriptive marks are not eligible for protection under federal law. A mark is geographically descriptive if (i) the mark is the name of a geographic location generally known to the American public, (ii) consumers will believe the goods sold under the mark originate in that location, and (iii) the source of the goods is the location named in the mark. Epstein's initial trademark application for MILK STREET CAFÉ was refused by the Trademark Office on this basis. But he asserted that his mark had acquired distinctiveness (also called secondary meaning) through continuous, widespread use over more than five years, such that consumers associated the mark with Epstein's restaurant services.
Kimball challenged Epstein's secondary-meaning theory. He offered a consumer survey demonstrating that less than 20% of relevant consumers within a fifty (50) mile radius of the restaurant associated MILK STREET CAFÉ with Epstein's services. Despite Epstein's evidence of national media coverage and decades of use, the court credited the survey and determined that Epstein's mark had not acquired sufficient secondary meaning. The court also determined that Kimball's use of CHRISTOPHER KIMBALL'S MILK STREET was unlikely to cause confusion with Epstein's use of MILK STREET CAFÉ, given the differences in the marks themselves and in the parties' respective services.
Nevertheless, the court declined to cancel Epstein's registration, stating that while it had the power to do so, Kimball failed to allege sufficient injury.
The case is a warning to owners of marks containing geographic indicators, and to entrepreneurs contemplating business ventures that will rely on location as an asset. Because of their inherently descriptive nature, even after decades of use, marks that contain geographic names are susceptible to challenges by other parties looking to use the same geographic name, and are subject to deeper scrutiny by the Trademark Office and the courts. While Epstein's registration survived this ruling (for now), his ability to enforce his mark against others who, like Kimball, wish to use MILK STREET for services located there, has been severely weakened. The court's decision also makes clear that the bar for proving acquired distinctiveness in a geographic name is high, and demonstrates the important role a well-administered survey can play in a court's evaluation of consumer recognition. Consequently, owners of marks containing geographic indicators should market and advertise their marks and products as broadly and consistently as possible so as to build widespread consumer recognition that will help ensure the enforceability of the mark.
As a side note, the court's opinion touched on the issue of interstate commerce, but did not delve into the question of whether the services provided by Epstein's MILK STREET CAFÉ which has only one location in Boston, affect interstate commerce. Usually, for a single-location restaurant, this is yet another hurdle mark owners need to clear when trying to prove ownership of federally enforceable trademark rights. If your business has only one location, this is yet another reason to market extensively and pursue advertising channels that will reach across state lines, and to keep track of interstate customers.
If you have questions about the "Milk Street" case, about geographically descriptive trademarks, or about any other trademark registration and brand management matters, please contact Donna Tobin at (212) 705 4878 or firstname.lastname@example.org, Dorna Mohaghegh at (212) 705 4869 or email@example.com, or any other member of the Frankfurt Kurnit Trademark & Brand Management Group.
Other Intellectual Property Law Alerts
Deadline: Are Your Copyright Office DMCA Agent Registrations Up to Date?
December 31, 2017 is the deadline for certain online service providers to update their Digital Millennium Copyright Act ("DMCA") agent registrations on the US Copyright Office's new online registration system.
December 18 2017
Beware of Trademark Solicitation Scams
Trademark solicitation scams are on the rise. If you receive correspondence about your trademarks from someone other than your trademark attorneys — correspondence that looks like an invoice or an offer for trademark services — it may not be legitimate. Here's a summary of what the scams look like and what you should do about them.
September 5 2017
Supreme Court Strikes Down Lanham Act Prohibition on Registration of Disparaging Trademarks
On June 19, 2017, the Supreme Court unanimously ruled in Matal v. Tam that Section 2(a) of the Lanham Act, which prohibits the federal registration of disparaging trademarks, is unconstitutional because it violates "a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend."
June 20 2017