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[np1986]

I've got a question about registered trade and business names.


I currently own a business called "The Moscow Bar and Grill". I have it registered as both a trade name as well as company name with my local registry.

Recently I had a fellow come to my business and claim he is going to sue me because he owns an establishment called "The Moscow Troika Bar". He claims I am infringing on his business name and goodwill. We are each located in different quadrants of the city (25 + minute drive) and offer similar food but in two different types of settings. His lawyer has written a letter claiming there is infringement on his business by way of "name confusion".

I have consulted two lawyers on this matter and have gotten two very different reactions. One told me there is considerable risk as the owner of the "The Moscow Troika Bar" can take me to court if he can prove he has loss of business due to my restaurant opening. The other has acknowledged there is risk but very small, and that his case is laughable.

Can anyone please shed some light on how likely this outcome would be? I am debating on whether to have my legal counsel respond or just ignore the letter completely.

I would appreciate any feedback.
Thanks.

[Kaitlin]

!!! IMPORTANT: Before anyone addresses your question, please get back online and edit your original post immediately to remove your actual business name, the other guy's business name, and any other information which could let the potential plaintiff know who you are. 
The attorney-client privilege you had with the attorneys you consulted disappears once you make that advice public. 

Also, anything a party says which goes against his interest and is heard/seen by the other side in litigation can be admitted in evidence by the other side as an "admission against interest".

Best bet for a forum like this is to create a ficitionalized scenario replacing terms in the real marks with parallel but different ones: replace place names with place names, descriptive words with descriptive, generic terms with generic, and so on.  (The kinds of terms used are important to the analysis.)  Something like "The Moscow Bar and Grill" and "The Moscow Troika Bar" might work.

[np1986]

Thanks for the advice....The names I used originally were fictional but have gone ahead and modified my post some more.

[Kaitlin]

I'll bump this to see if someone more familiar with state common law actions will respond.

There are states that do have actions based on "trade name" infringement, although personally I believe this is a misnomer.  IMHO, confusion of similar trade names is only a problem when the trade names are being used as trade marks, and you already have common law trade mark infringement to deal with that.  My impression is that states that do this tend to follow trademark infringement law, which looks to "likelihood of confusion" among the relevant consuming public; they just do it under the name "trade name infringement" or possibly "name confusion"(?).  There could be odd permutations peculiar to cases construing state trade name statutes, however, so I hope someone who does a lot of local work will jump in here.

Meanwhile, however, following trademark guidelines, I would expect words referring to what the business actually is (e.g. bar or bar and grill) should be ignored as generic.  So the question would come down to whether Moscow and Moscow Troika would be confusingly similar to the buying public.  My instincts -- and note the disclaimer this is not a legal opinion -- are that the two could co-exist. 

Anyone else have thoughts? 

[BobRoberts]

Re: Trademarks, your experience shows how truly subjective Trademarks are... 

Not Legal Advice- May not know all the facts- There may be other particulars to your situation (including the exact names involved) that could alter the following...

I agree with Kaitlyn that bar and bar and grill are generic names. However, when examining a Trademar, I believe that the commercial impression of the marks as a whole would be what determines confisingly similar (and this infringing). 

First, a question...  What is "Moscow Troika"?  Is Troika a region/part of the city of Moscow?  A type of food? And are there other bars or restaurants in your city with Moscow in the title?  i.e., The Moscow Cuisine, The Moscow Eatery, Bar Moscow?  etc?  If there are one or two others that have apparently coexisted with the Moscow Troika Bar, then you may be alright. 

Digging in memory, restaurants with confusingly similar names have been given at least a range of 20-25 miles Radius (not re: Federal Registered marks, but common law (unregistered) marks).  Thus, to have a restaurant with a confiusingly similar name within that range (and thus the same geographic area of the existing mark) would be infringement.  Thus, if you live in a larger city, and the restaurants may be found in the same yellow pages, or be advertised on the same radio station, I would say that a range of greater than 25 miles away could still be within a problematic range for the trademarks, especially where "The Moscow Troika Bar" is well-known in that community.   

Just curious- Why did you select Moscow Bar and Grill for your name?

Regarding confusion and looking at the marks as a whole, could the existence of 'Troika' in the existing mark be considered a dominant part of that name?  If so, leaving it out in your proposed name may be acceptable.  If there are other marks in your area with Moscow in the name for restaurants/bars, then the mark itself may be considered weak, and thus you may be ok.  However, if this is the only restaurant/food/bar name within 200 miles with any inkling of 'Moscow' in the name, then you may be close enough to be confusingly similar.

Really depends on the specifics.  If a consumer heard your commercial for "The Moscow Bar and Grill" and knew of the prior "Moscow Troika Bar", might they think (from memory) that the current commercial might be that of "Moscow Troika Bar", that they've heard from friends was so great?  Or might they think that you are otherwise affiliated with "Moscow Troika Bar"? 

[np1986]

The names of the establishments are not trademarked...they have only been registered as Trade Names and Incorporation Names...I am located in Canada so perhaps different regions have different names.

The word "troika" is a word in a different language, not English.

My establishment has a different color scheme, decor, sign (very different)....

What I would like to know is, is if the owner of "The Moscow Troika Bar" has registered as business names "Moscow Market" and "Moskow Troika Market", can he have more "ownership of the name "Moscow"? He claims since he "has a theme going on", I cannot use the name "Moscow".

Ultimately, what I am worried about is his ability to claim he has lost profits due to my establishment opening. Is this easy to do?

[np1986]

And to answer your question...There is one other establishment that serves food in my city that has the name "Moscow" in its name.

[JSonnabend]

A name of an "establishment" as in a restaurant name, is undoubtedly a trademark, end of discussion, unless it is not distinctive.

- Jeff

[BobRoberts]

Hi np1986,

In most cases, Trademark issues tend to be very fact-specific.  The kind of information you could provide over a public bulletin board will likely not be enough to resolve your issue - and unless it's a slam-dunk one way or the other, do you really want to trust such a big decision on people that you don't really know, and have no way of knowing all the facts?

You mentioned:
"I am located in Canada so perhaps different regions have different names."

Please be aware that the considrations I mentioned are used in US law.  I'm not sure/qualified to really speak about Canadial Law, and even if most of the Canadian Legal analysis might be similar, there may be some aspect of Canadian Trademark Law that wazsn't considered here, and that could answer your question directly.  I simply (and unfortunately) don't know.

Good luck.

Not to be construed as legal advice.

[Sabachka]

I have consulted two lawyers on this matter and have gotten two very different reactions. One told me there is considerable risk as the owner of the "The Moscow Troika Bar" can take me to court if he can prove he has loss of business due to my restaurant opening. The other has acknowledged there is risk but very small, and that his case is laughable.

If this forum isn't the place to say whether the risk of infringement is small or large on the fact pattern np1986 presents, then maybe its an appropriate place to provide some advice for selecting a trademark attorney.

I suppose one approach is to understand the reasons why attorney A says the risk is considerable, and then present those reasons to attorney B (who thinks the risk is minimal) and ask him or her to explain why he or she disagrees. If you're satisfied with B's explaination, work with B.

Generally speaking, you want to work with a lawyer who is an expert in trademark law. Not every lawyer is knowledgable in trademark law and even fewer are expert. Trademark law is a specialty, just like surgery is a specialty in the medical world. Ask the lawyer about his or her trademark experience. You don't want a generalist with no experience in trademarks. What percent of his or her practice involves trademarks? Has he or she written or spoken on aspects of trademark law? How long has the lawyer been practicing trademark law?

Do you belong to some business organization, e.g, chamber of commerece, where other members have used a particular trademark lawyer in the past? Ask around - maybe someone can refer you to someone that they used that the other person found to be knowledgable.

[artchain]

Thought this might have some relevance to your situation:

Court Deems Term "Hawaiian Barbecue" Is Generic

L&L Franchise Inc. v. Edward Tsai dba Shaka Hawaiian BBQ

http://www.californiahospitalityalert.com/cgi-bin/DJgal_showdocs.cgi?DOCNO=00030&ZONE=_&T=article.html

[JSonnabend]

Thought this might have some relevance to your situation:

Court Deems Term "Hawaiian Barbecue" Is Generic

L&L Franchise Inc. v. Edward Tsai dba Shaka Hawaiian BBQ

http://www.californiahospitalityalert.com/cgi-bin/DJgal_showdocs.cgi?DOCNO=00030&ZONE=_&T=article.html

Relevant how?

- Jeff

[artchain]

The original poster has changed the names of the restaurants involved, so it's not possible to address the specific situation.  However, a name that simply includes a location and style of food might be too generic to be protected by trademark.

Do I understand that correctly?

If so, the original poster would still need to determine if that applies to his particular situation.

[JSonnabend]

That's true of all potential marks: if it is non-distinctive (i.e., merely descriptive or outright generic), it cannot function as a mark.  There's nothing peculiar here to the world of food services.

- Jeff