June 19, 2014

Nashville's Calypso Cafe Serves Up Trademark Lessons to Start-Up Companies

by Guest Blogger

One of my favorite fast casual restaurants in Nashville - Calypso Cafe - recently moved from its original location near Vanderbilt University to a larger space a few miles away. It was a victim of its own success. The original location was small and aging. Plus, parking was a problem. The new location will remedy these problems.

I was introduced to Calypso Cafe (or simply "Calypso") by my college girlfiend (now wife) who subsisted on a steady diet of Calypso's rotisserie chicken and fruit tea while she was at Vanderbilt. We continued to be regulars after college, and we passed on our affinity for the restaurant to our son. As you can see, he gets very excited about his meals there:

James At Calypso 26

So what does this have to do with trademarks? Several years ago, Calypso Cafe began to offer franchising opportunities. As part of this process, it sought out federal trademark protection. Before filing a trademark application, however, the restaurant made a subtle change to its name. Perhaps anticipating that "Calypso Cafe" might not be registrable, the restaurant added the word "Couva" to its name. The restaurant subsequently filed a trademark application for COUVA CALYPSO CAFE. After considerable back and forth with the USPTO regarding the registrability of this trademark (which included the ultimate disclaimer of trademark protection for the words "Calypso Cafe"), a registration ultimately issued in 2006.

Here is a copy of the first page of the 2006 menu that the restaurant submitted as an example of a trademark use:

06 19 14 Blog Calypso Menu

Calypso's experience holds important trademark lessons for new businesses. To avoid problems down the road, you should consider the following two factors before choosing the mark: (1) whether the mark you want is registrable; and (2) how difficult it will be to protect your mark based on the strength of the mark selected.

The most common reason for the USPTO to refuse registration is a "likelihood of confusion" between the applicant's mark and a pre-existing mark owned by another party. Another common reason to refuse registration is because the proposed mark merely describes the applicant's goods or services. Calypso's trademark application was initially rejected on both of these grounds.

During the prosecution of the trademark application, the restaurant successfully argued that COUVA CALYPSO CAFE was not likely to be confused with an existing registration for GRAN COUVA that was cited by the USPTO. Next, to overcome the descriptiveness rejection, the restaurant disclaimed trademark protection for "Calypso Cafe", which leaves the word "Couva" as the only protectable portion of the name.

The takeaway for new businesses is to avoid choosing trademarks that are likely to be confused with pre-existing marks and are descriptive of the applicant's goods and services. It is also in your best interest to select a mark that is "strong" in a trademark sense (i.e., a mark that is easily protected against third party use). The strongest and most easily protected marks are invented or arbitary 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 (e.g., DAY AT A GLANCE for calendars). Marks that describe the goods or services (e.g., the "Calypso Cafe" portion of the registration discussed above) 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.