A couple months ago, I explained how the franchising experience of one of my favorite Nashville fast casual dining options - Calypso Cafe - provides valuable trademark lessons to start-up companies. This week, I will turn my attention to another one of my favorite local dining options that decided to franchise: Baja Burrito.

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Baja Burrito on Thompson Lane[/caption]

Baja Burrito was one of the first "build-your-own" burrito shops to open in the Nashville area. The food is prepared from scratch and made with quality ingredients. For you non-Nashvillians, Baja Burrito operates in the same vein as Chipotle.

Like Calypso, Baja Burrito's success led to the decision to franchise. Like Calypso, Baja Burrito ran into trademark trouble. And like Calypso, Baja Burrito's experience highlights the factors that new businesses should consider when choosing trademarks.

When choosing a trademark, the first factor to consider is whether the mark registrable. The most common reason for the U.S. Patent and Trademark Office to refuse registration is a "likelihood of confusion" between the applicant's mark and a pre-existing mark owned by another party. To identify any obvious conflicts, you should conduct a preliminary screening search. If you find an obvious conflict, then you should not use the trademark.

A quick search of the USPTO database reveals existing registrations for BAJA BURRITO KITCHEN plus design and BAJA BURRITO KITCHEN. Perhaps anticipating a conflict with the owner of these registrations, Baja Burrito chose another name for its franchises: Blue Coast Burrito. A federal trademark application was filed in 2006, and it sailed through the USPTO relatively unscathed (although it was required to disclaim trademark protection for the word "burrito"). A registration issued on June 19, 2007 for BLUE COAST BURRITO in a black and white design:

In addition to choosing a registrable mark, it is also important for new businesses to select a mark that is "strong" in a trademark sense (i.e., a mark that is easily protected against third party use). Generally speaking, the strength of a mark depends on its distinctiveness, that is, how descriptive the mark is of the goods and services. The strongest and most easily protected marks are invented or arbitrary words (e.g., HÃAGEN-DAZS for ice cream or APPLE for computers). Marks that suggest, but do not describe the applicant's good or services, are also registrable and relatively strong. Blue Coast Burrito falls into this category since the name is meant to evoke the fish tacos found at "Playa Costa Azul," a.k.a. "Blue Coast Beach" on the Baja California peninsula. Marks that describe the goods or services are generally considered "weaker" and more difficult to protect. They are also not registrable on the USPTO's Principal Register until they acquire distinctiveness.

Of course, there are other considerations involved in selecting a mark, which is why it often makes sense to consult a trademark lawyer. Working with a trademark lawyer will help you choose a mark that is registrable and easily protected.

The lawyers at Trademarkology provide trademark registration services backed by the experience and service of one of the nation's oldest law firms. Click here to begin the process of protecting your brand name with a federally registered trademark.