Law Offices of John P. Connell, P.C.: There are multiple levels of protection you can seek to secure the name of your restaurant or establishment. The first level of protection, though slight, is the least expensive and least burdensome to attain. It comes from an establishment’s registered “doing business as” (d/b/a) certificate, which is required by law for every business to have. Consistent with M.G.L. c. 110 s. 4, its purpose is to grant a right “to restrain the unauthorized use by another of a person’s name in conducting a commercial enterprise.” China Clipper Restaurant v. Yue Joe, 312 Mass. 540, at 542 (1942), quoting, Thompson v. Spagnuolo, 311 Mass. 597, at 599 (1942). Registering your business’s d/b/a with the City Clerk in your municipality is purely an administrative requirement and will not grant any trademark right, yet it will prevent any subsequent corporation from doing local business in the exact same name. Once obtained, a d/b/a certificate must be renewed every four years from the date of the registration.
The second level of protection is achieved by registering your establishment’s name as a service mark at the state level. A registered service mark identifies and distinguishes a natural or legal person’s services in the same way as a trademark, functioning to notify the public of the property interest you have in your name. Acquiring a service mark for your restaurant’s name will prevent any subsequent business within the state from using your exact name or a name deemed to be “confusing similar.” Pursuant to M.G.L. c. 110H s. 2(6), a mark will be denied registration if it “consists of or comprises a mark which so resembles a mark registered in the commonwealth…as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion or mistake or to deceive.” For this reason, any establishment that properly secures a service mark for its business’s name, with the purpose of actual use of that name and not merely intention for use, can avert second-comers within Massachusetts from naming their establishment something confusingly alike.
For example, in Calamari Fisheries, Inc. v. The Village Catch, Inc., the plaintiff, a restaurant located in Boston by the name of “The Daily Catch,” brought an action against defendant, “The Village Catch,” a competing seafood restaurant in Brookline. 698 F.Supp. 994 (1998). In this case, the plaintiff filed for registration one year after the defendant opened its doors for business. As a result of this registration, at trial, the burden of proof shifted to the defendant to require “sufficient evidence to rebut the presumption of plaintiff’s right to such use” of the disputed name. Id. at 1007. The court looked at eight factors to determine whether a likelihood of confusion existed: the similarity of the marks, the similarity of the goods or services, the relationship between the parties’ channels of trades, the relationship between the parties’ advertising, the classes of prospective purchasers, evidence of actual confusion, the defendant’s intent in adopting the mark, and the strength of the mark. Id. at 1011. After consideration of these factors, the court found the marks were sufficiently similar to cause confusion and that the defendant did not adequately rebut plaintiff’s exclusive right to its name. Id. at 1016.
Proper registration causes an infringer to be liable for additional remedies, including treble damages and attorney’s fees if he is found to have acted in bad faith. To register your establishment’s name as a service mark, an application must be submitted to the Secretary of the Commonwealth of Massachusetts. The registration term is five years and, if a renewal application is filed at least six months before the end of this term, an additional five-year renewal term may be acquired.
Still, the most preferable level of protection for an establishment to obtain, if possible, is that of a federal service mark. By registering your establishment’s name as a service mark with The United States Patent and Trademark Office, you will be provided with legal ownership of that name on a national level. The registration of an establishment’s name will grant protection against a subsequent business using that same name in any state. Under the Federal Trademark Act of 1946, any registration of a mark “shall be prima facie evidence of the validity of…the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration.” 15 U.S.C. s. 1115. Registration on the federal level remains effective for ten years. It may be renewed for additional ten-year periods if an application for renewal is filed within the year prior to the expiration of the previous term.
CONTRIBUTED BY COURTNEY MCGEE
© Law Offices of John P. Connell, P.C., 2012