Restaurants With Similar Names
Come to Blows Amid Confusion
By JERRY MARKON
Staff Reporter of THE WALL STREET JOURNAL
In the fruit stands of the old city market in Omaha, Neb., where he worked
as a child, Joe Monastero earned a nickname.
"Hey bananas, load the truck," the boss's son used to tell the
seven-year-old boy. The name stuck.
Half a century later, Mr. Monastero fulfilled a dream by opening a
restaurant-bar and naming it Joe Banana's. Everything went fine until 1999
when another restaurant-bar opened six blocks away. Its name: Banana Joe's.
Fed up with deliveries and even wedding guests going to the wrong place,
Mr. Monastero and his wife went to court. Today, they have some advice for
people wanting to name a restaurant: Don't take chances -- get a lawyer and,
if possible, a trademark.
More people are. It used to be that restaurants with similar names could
coexist peacefully -- particularly if they were in different towns. But a
growing number of restaurants are opening branches all across the country,
and more are advertising on the global Internet, so legal battles over naming
rights are multiplying. The savviest owners are seeking federal trademarks
for their names; since 1995, federal trademark applications for restaurant
names and products have increased 40%, according to Thomson & Thomson, a
North Quincy, Mass., trademark-research firm. "That means more folks are
getting ready to go to war," says Randy Oppenheimer, a Los Angeles
trademark lawyer.
Even in New York City, where pizzerias named "Ray's" have
sprouted on seemingly every corner, most are owned or licensed by one company
-- U.S.A. Famous Original Ray's Licensing Corp., which has trademarked the
names Ray's Pizza, Famous Ray's Pizza, Famous Original Ray's Pizza and The
Original Ray's Pizza. If any other pizzerias open using the name Ray, the New
York-based company regularly stops them with lawsuits or letters threatening
action.
"People crop up all the time trying to copy a successful trademark,
and we intend to continue stopping them. They are infringers,'' said Stephen
Feldman, a lawyer for U.S.A. Famous Original Ray's.
Naming an eatery after the owner -- a practice immortalized in movies like
"Casablanca" and songs like the '60s classic "Alice's
Restaurant" -- is particularly dicey in today's litigious society. The
tradition dates to 18th-century Paris, when modern restaurants with separate
tables first came into vogue. It became "part of the American success
story, sort of Horatio Alger set in a luncheonette," says Will Anderson,
author of the book, "Where Have You Gone, Starlight Cafe?" The book
tracks 40 mom-and-pop restaurants from mid-century, including 17 once named
after their owners.
The two main standards for proving trademark infringement are whether
customers are likely to get confused and which establishment was using a
particular name first. Two years ago, a Manhattan eatery, Patsy's Restaurant,
sued Patsy's Pizzeria, alleging that the Harlem pizza joint was ripping off
its name in peddling pasta sauce. In February, U.S. District Judge John S.
Martin agreed, and ordered the Harlem restaurant to cease and desist using
the name Patsy's to sell sauce, concluding that Patsy's Pizzeria had designed
its sauce label to "capitalize" on the success of its rival.
"Corporate giants have come to learn the value of choosing a distinctive
name," the judge observed.
Tony Miller learned that lesson the hard way. When the former investment
banker opened a Mexican restaurant in Denver in 1995, he named it Zuma, after
a friend's cat. A month after opening, Mr. Miller learned of another
restaurant named Zuma in Boston. Looking to expand nationally, he became
concerned. So, he fed the syllables of ancient Mexican words into a special
computer program and changed the restaurant's name to one of the made-up
words it spit out: Z-TECA.
But that didn't sit well with a Seattle-based chain, called Azteca, which
sued. Azteca persuaded a federal judge to order Z-TECA to temporarily remove
its name from two restaurants in the Pacific Northwest where the chains were
competing. The judge held that customers were likely to be confused and that
Azteca had first dibs on the name because it had obtained trademarks in
Washington and Idaho, before Z-TECA got its federal trademark. (States also
issue trademarks, but they only provide legal protection within their own
borders.)
At first, "nobody was overly concerned," says Jeffrey Letwin, a
Pittsburgh lawyer for the Z-TECA chain. "You find Azteca at the start of
the phone book and you find us at the end."
Eventually, Z-TECA settled the lawsuit by agreeing to change its name,
along with a second suit against it filed on behalf of an Arizona-based chain
of Mexican restaurants calling itself Z'Tejas. Subsequently, Mr. Miller's
company spent $1.4 million to hire a brand-identity firm and adopt yet
another name: Q doba. The chain now has more than 60 restaurants -- and a
trademark on its name -- and isn't currently being sued by anybody.
Back in Omaha, Mr. Monastero never had such national aspirations. So when
he opened Joe Banana's in November 1994, he only obtained a Nebraska
trademark. That became the basis of the lawsuit he filed against Banana
Joe's, a national chain with a Caribbean theme, in August 1999, after
customers and vendors kept getting the two establishments mixed up.
Jon Field, chief executive of Field Development Group, Banana Joe's
Ohio-based parent, dismisses the suit as "garbage." The chain, he
points out, obtained a federal trademark on its banana name, though after Mr.
Monastero got his Nebraska mark. Last November, Banana Joe's closed its Omaha
establishment, after barely a year in business, and the lawsuit was dropped.
Mr. Field cites "poor performance" unrelated to the suit.
Mr. Monastero says he is still angry about the time and legal bills that
the flap consumed, and he says suppliers, customers, and even Web sites still
mistake his restaurant for the shuttered Banana Joe's. "We just wanted
to be a neighborhood restaurant and bar," says his wife, Connie.
"This whole thing has been very frustrating."
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