It”™s understandable that a restaurateur might get a bit hot under the collar if a nearby competitor were trying to use his recipe for success.
Q has been serving barbecue cuisine on Main Street in Port Chester since Jeffrey and Jennifer Kohn opened the joint nine years ago, garnering goodwill based on good food. But last year, when customers came into the restaurant and congratulated the Kohns on their newly opened restaurant in Stamford, they were confused.
Why? The Kohns hadn”™t opened a new restaurant in Stamford. A new barbecue restaurant named “Bar Q” had opened less than 10 miles away in Stamford and had a similar logo. That similarity was the source of the confusion among their customer base. Then customers started coming in with Groupons for the Stamford eatery. Then came the final straw.
“A Connecticut Transit bus drove right by their restaurant with an advertisement for Bar Q in Stamford on the back,” said Stuart Slotnick, an attorney with Buchanon, Ingersoll & Rooney P.C. and a friend of the Kohns. “Both logos have a stenciled ”˜Q”™ ”” but Q in Port Chester had vertical breaks, while Bar Q in Stamford had horizontal breaks. On top of that, the restaurants have a similar style and the same customer base.”
Jeffrey Kohn was getting heated up.
“It was frustrating; they”™re 8 miles away, and we deliver a lot to Greenwich. People were congratulating us on our new restaurant, and it wasn”™t us,” said Kohn. “It was too close for comfort.”
The Kohns quickly consulted with Slotnick, who sent a cease and desist letter requesting that Bar Q stop using the logo immediately.
“The letter was wholly ignored, and so we filed suit in federal court in White Plains,” Slotnick said in a phone interview. “We believed that it was intentional. They weren”™t willing to change the logo or rebrand. Only after the suit was filed were they willing to talk.”
The Lanham Act is the federal law that governs trademarks, and to succeed in a trademark infringement suit, the plaintiff has to show the defendant used the mark in commerce when there was a likelihood of confusion. Slotnick looked at what was happening and knew he had a good case. “Here, it was brought to the Kohns”™ attention because of actual confusion,” Slotnick said.
Rather than engage in protracted, costly litigation, Slotnick decided to figure out an easier way to solve the dispute. He went to the graphic designer that designed the logo for his client, gave them a few sketches, and asked them to come up with some alternatives. The designers returned 20 samples, and once they took out ones that were still too similar, Slotnick made a proposal.
“I said they should be ”˜Bar B-Q”™ instead of ”˜BAR Q,”™ it plays off the food and the bar scene they”™ve tried to build,” Slotnick said. “Once we gave them the drawings, they threw up their hands and agreed to rebrand.”
Scott Lydon, an associate at McCormick, Paulding, and Huber L.L.P., which represented Bar B-Q in the case, agreed.
“Q filed suit against Bar Q,” Lydon said. “We had some valid defenses, but it wasn”™t worth fighting it out in the courts once we found an amicable solution.”
After agreeing to settle the dispute by rebranding within a period of six months, the Stamford restaurant”™s owners acted immediately to remove the logos. A letter was then filed with the court, requesting the case be adjourned until October to give the Stamford restaurant time to rebrand. According to Slotnick, this was the best resolution for all involved.
“Sometimes this kind of litigation is used as a business intimidation tactic. But that”™s not what happened here,” Slotnick said. “Trademark law arose for this purpose, to prevent confusion in the marketplace.”
Comments 3