Restaurant Trade Dress Series, Part 1: How a restaurant can trademark its trade dress

A growing area of trademark law known as trade dress law can be used to protect the general image –the look and feel – of a restaurant. Trade dress applies to restaurant decor, both interior and exterior, and the menus and written materials used in brochures, texture and finishes, color combinations, design elements, artwork, logos, signs, shapes, sounds, smells, and many other features of a business or its restaurant service and product that the public comes to associate with a particular restaurant.

 If a restaurant owner has developed a combination of these elements such that they distinguish the restaurant from other establishments, the restaurant owner can file a federal trademark application to register certain aspects of its restaurant environment as trade dress – those features that the consumer uses to identify the brand (source of the product). For example, when you see red and white stripes, you think of the TGIFriday’s restaurant, and when you see a Canadian outback theme you think of Bugaboo Creek restaurant. If the trade dress acquires consumer recognition with your brand, it can be registered with the US Patent and Trademark Office.

 After it has been registered, any competitor trying to copy that image can be the subject of a suit to obtain an immediate injunction to stop the copying, as well as an award of damages, lost profits, and other appropriate monetary relief, including attorneys’ fees, and up to three times your normal damages or punitive damages where your rights have been flagrantly ignored. Trade dress actions have been successfully won by Pebble Beach in a suit to protect the visual appearance of their well-known golf holes and by a Mexican restaurant chain Taco Cabana that successfully sued another one, Two Pesos, for copying the distinctive look of its theme restaurants. The Nature Company also sued one of its competitors for allegedly copying the overall appearance and scheme of its retail stores.

 Your first step will be to identify the elements that define your restaurant’s trade dress. Next, you will need to assess how well these elements qualify as trade dress by determining if they create consumer identification of your restaurant. This can most easily be accomplished through surveys. (Note: keep these surveys as proof should you need to defend you trade dress at any time.) If you have not yet achieved trade dress, you know you will need to spend time on another way to see how customers identify with your brand. Follow social media and see what things people mention or that commonly appear in photos taken by customers at your restaurant. You can capitalize on these in your own social media content to create the association with a wider audience. When you have the consumer recognition of the aspects that identify your restaurant, you are ready to file an application for a federal trademark. (You may also elect to do a trademark search before filing the application to see if there are any other marks that would prohibit you from being granted your mark.) Once your trademark is registered, you will want to put in place a management system to watch for infringers on your mark – those who are illegally copying your hard-earned registered trade dress. Should you identify any potential infringement situations, it is best to seek the advice of an experienced trademark attorney to determine how best to proceed. (Later in this series, we will take a closer look at trade dress infringement.)

The next part of this series takes a closer look at how restaurant decor can qualify as trade dress. In Part 3 of this series on restaurant trade dress, we will explore how courts across the country apply different tests when evaluating whether there has been an infringement and how the law is interpreted and applied here in New York and the Second Circuit. In Part 4, we will explore how courts will not protect functional features, no matter how arguably unique or distinctive. Part 5 explores trade dress infringement cases by using the Fuddruckers chain as a case study.