Restauranteurs bring so much creativity to their work – not only to creating their signature dishes and drinks, but also to many other aspects of the diner’s experience from the design of the restaurant’s interior to the shape of the dinnerware. While many restaurant owners register the names of their restaurants and their logos as marks, they often don’t realize that registrations may also help to protect some of the other ways that they distinguish themselves from the competition. Here are a few other possibilities to explore. As always, the key to protection under trademark law is that what you claim as your mark must identify the source of your products or services.
Do you use take-out boxes with a distinctive shape or design?
If you’ve ever eaten at Tuk Tuk Thai, you’ll likely remember their brightly colored “Lotus” boxes. You can see images of the unusual container here, here, and here. Just a few months ago, Tuk Tuk Thai Holding Corp. obtained a registration for “a three dimensional configuration of a food container with eight vertical sides that fold together to form a flower shape on top of the container” used to indicate the source of “restaurant services and food and drink take-out restaurant services.”
Be aware, this is a particularly difficult application process. Anyone who wants to register this type of mark may be asked whether the design is the subject of a patent or patent application, how the design works, whether there are alternative designs available to competitors that don’t place them at a disadvantage, etc. But the reward is worth the effort: a trademark registration is a great way to protect this box design because that protection can last forever – or at least as long as the owner keeps renewing the registration.
Do you have special names for signature menu items?
If a friend mentions picking up a HAPPY MEAL for their kid or eating a WHOPPER, you know without asking where they got those particular things. That’s because the names of these menu items also indicate their source. McDonald’s Corporation has several registrations for the mark HAPPY MEAL used with restaurant services and the meal, itself. Similarly, Burger King Corporation has several registrations for the mark WHOPPER used with restaurant services, hot sandwiches, and hamburger sandwiches. You may also be able to register the name of your own culinary creations and protect that wording from being used by your competitors on their menus.
Do your servers, chefs, or other employees wear distinctive uniforms?
If so, you might be able to protect this distinguishing feature by a trademark registration. For nearly a decade, the Tilted Kilt Franchise Ltd. has owned a registration for a “server uniform comprising the following elements: a white, cropped, camp-shirt-style blouse featuring half-length sleeves notched at the hem, a flat collar with pointed tips, and long center-tie closure, underneath which is a red, black, blue, yellow, and white tartan plaid bikini-style top, below which is a bare midriff and a thigh-length kilt in the same red, black, blue, yellow, and white tartan plaid, with a shield-shaped patch in the front upper left corner. The patch features a stylized silhouette of a unicorn in black on a diagonally divided field of green and yellow. The uppermost portion of the patch is a horizontal black stripe with the wording 'Tilted Kilt' in yellow. The uniform includes a black sporran with flap closure, worn over the kilt. The uniform also consists of white, cuffed, knee-high socks with red flashings and black shoes“ used with “Providing of food and drink; Pubs; Restaurant and bar services.” You can see examples of the uniform here, here, and here.
This is another type of mark that is particularly challenging to register. Applicants may be asked whether the mark is a common design, if it is unique or unusual in its field, if the mark can create a separate commercial impression apart from any wording that appears on the uniforms, etc. But it may be worth the hassle if you’re able to prevent competitors from using very similar uniforms.
Do customers associate a particular slogan with your restaurant?
Anyone driving around Metro Atlanta in the past decade will be familiar with billboards featuring three-dimensional cows who appear to be painting the words EAT MOR CHIKIN. See an example here.
These were part of a bigger ad campaign for Chick-fil-A in which ”rebel cows” were supposed to be trying their best to convince us to eat chicken instead of beef (hence, the misspellings). CFA Properties, Inc. now holds multiple registrations for EAT MOR CHIKIN used with restaurant services and various types of clothing and hats.
Not all slogans can be registered. If all of the wording in a slogan is generic (directly stating what the products or services on offer are) or descriptive (directly indicating a feature or characteristic of the products or services), the application may be refused. Another common problem with slogans is a failure to function – this means that the wording simply does not do the heavy lifting of a trademark because it does not indicate the source of your products or services. For example, the USPTO refused Carvel Corporation’s application to register the mark AMERICA’S FRESHEST ICE CREAM because the wording was a phrase commonly used by ice cream makers, and consumers would not perceive the wording as pointing to Carvel as the source of ice cream sold in connection with the phrase.
Do you serve your food or beverages in dinnerware that has an unusual shape?
If customers associate the bowl, cup, etc. that you serve your food or beverages in with your particular restaurant, then you may be able to protect those designs (assuming you own all the rights to them) under trademark law. Visitors to Max Brenner often enjoy sipping their hot chocolate from a “Hug Mug.” You can see the specific design here, here, and here. Max Brenner Industries Ltd. holds a registration for the “three-dimensional representation of a cup and saucer” used with “Restaurant services featuring chocolate beverages.”
Similarly, part of the fun of eating at Grain & Berry is the big bowls that food is served in. You can view the design here, here, and here. Acai Group LLC holds a registration for a “transparent footed bowl design with raised bands aligned vertically around the top portion of the bowl and elongated ovals designating raised and lowered portions of the foot of the bowl and a circular section connecting the top of the bowl to the foot of the bowl” used with “restaurant and café services.”
Do customers associate a particular color of object with your restaurant?
Under certain circumstances, it may be possible to register a color as a mark. For example, BR IP Holder LLC has a registration for “the color pink as applied to the entire surface of spoons while rendering restaurant services” used with “restaurant services; cafe services; snack bar services; carry-out food services.” This is protection for the pink spoons that you use when eating ice cream at Baskin-Robbins. See here, here, and here for examples.
Note that the registration is not for the color in the abstract, in other words, it is not a blanket permission to use that color on any object in any way and to prevent anyone else from using that color in any way. Instead, it is limited in two important ways. First, the registration protects use of the color on a particular object (in the example, on a spoon). Second, this use indicates the source of only the products or services that you indicated in the registration (in the example, pink spoons indicate the source only of “restaurant services; cafe services; snack bar services; carry-out food services”).
Do customers associate a particular hashtag with your restaurant?
Depending on how you use your hashtag, you may be able to register it as a mark. The hashtag has to be used to identify the source of your products or services, not just to organize comments from social media users about the products or services you offer. Two great examples of restaurants that get this right are Smashed Waffles and Mojo Bowl. Smash Ventures, LLC has a registration for the mark #GETSMASHED used with “waffles, coffee,” “retail bakery shops; retail waffle shops,” and “restaurant services, catering; coffee shops,” and Mojo Bowl LLC has a registration for the mark #LIVEBOWLDLY used with “Restaurant services featuring acai berry bowls, oatmeal bowls and fruit smoothies; mobile restaurant services featuring acai berry bowls, oatmeal bowls and fruit smoothies; food catering services; food preparation services made to order for delivery or pickup.” You can see how they use their hashtag marks in the real-world marketplace here and here.
Not all hashtags can be registered. If all of the wording in a hashtag is generic (directly stating what the products or services on offer are) or descriptive (directly indicating a feature or characteristic of the products or services), the application may be refused. Another common problem with hashtags is a failure to function – this means that the wording simply does not do the heavy lifting of a trademark because it does not indicate the source of your products or services. For example, the Chicago-based owner of a restaurant group applied to register the mark #MAGICNUMBER108. The application was refused because the hashtag was a trending reference to the Chicago Cubs’ first World Series win in 108 years. Because the wording was a widely-used message to express support for the Chicago Cubs, the public would not perceive it as indicating the source of particular products or services. In short, the USPTO won’t let you monopolize a popular hashtag that people love for reasons that have nothing to do with your products or services.
Are there distinctive features in your restaurant’s exterior or interior?
There are so many interesting ways that this can work. You might have a particular sculpture that appears outside of your restaurant. Visitors to P.F. Chang’s will expect to see at least one large “stone” horse in front of the entrance. See here, here, and here for examples. That’s why P.F. Chang’s China Bistro, Inc. holds a registration for the three-dimensional design of a “horse wearing a saddle with a blanket with a knot on top . . . [and] a bridle, breast straps and back straps decorated with stylized hearts” used with “Catering services; Restaurant and bar services, including restaurant carryout services; Restaurant services, namely, providing of food and beverages for consumption on and off the premises.”
Or you might have distinctive lighting fixtures inside your restaurant that function as an indicator of source. This is more common than you might think. Have you ever noticed the “bucket” lights inside a KFC? See here and here for examples. These are protected by a trademark registration for “a three-dimensional configuration of a light fixture in the shape of a vertical bucket with vertical red-and-white stripes” used with restaurant services.
Even smaller chains may seek this type of trademark registration. Visitors to Rocco’s Tacos may remember their offbeat chandeliers. You can see one here. Taco Tavern owns a registration for this mark described as a “light fixture displayed in the restaurant dining room and bar. The light fixture is a metal chandelier that consists of a series of multi-pointed star-shaped ornaments with small punched-out designs through which light emanates. The star-shaped ornaments are located at the tips of the curved rods or loops that extend from the middle of the fixture at its base. The fixture hangs from the ceiling” used with “restaurant and bar services.”
Or you might have an unusual design scheme that extends beyond a single feature to cover a combination of lighting fixtures, wall decoration, and seating. Chipotle’s distinctive interiors are a great example. Chipotle Mexican Grill owns a registration for “the appearance and design of the interior of a restaurant, specifically including lighting mounted on a gooseneck-shaped arm affixed to the side of the table, relief images on stone or concrete or stone-look-a-like, wall panels drilled with variable-sized perforated holes, and marshmallow-style seating” used with “Restaurant services; take-out restaurant services.” Here’s what that description looks like in the real world.
This functions as a mark because any Chipotle customer who was asked to close their eyes or be blindfolded until they were taken to a particular location and who opened their eyes to something that looked like the description in the registration or the image in the link would know they were standing in a Chipotle restaurant.
Believe it or not, that’s not even a complete list of all of the different types of marks that a restauranteur may want to protect, but it’s a good jumping off point before talking with an attorney who can fill you in on other potential missed opportunities.
This information was posted on September 27, 2021 and was accurate as of the date of writing. However, the law changes frequently, and readers should not rely solely on general online information but instead should consult a licensed attorney by asking questions about their specific issues when they need legal advice.