IP P®OSPE©TIVE

$325. Thats what it costs to own a brand name. If your business is worth anything at all, and you want people to associate the name of your business with your product, why wouldn’t you pay $325 to register the name? Take an hour of your time and do it yourself, or pay a lawyer for an hour or two worth of work to register it in order to insure accuracy and thoroughness, and save yourself the nightmare of having your business name taken by someone else.

Now, I know what you are thinking. Somebody told you that you have the right to use a name simply by being the first to use that name in commerce. Somebody told you the truth. But I bet Somebody didn’t also tell you that, if someone else subsequently registers that name with the USPTO, you will only enjoy the right to continue to use your name in that specific locality you currently do business, and nowhere else. Furthermore, you will only enjoy the right to sue for false designation under section 42 of the Lanham Act. And you may be subjecting yourself to suit by the registering party, forking up attorney fees just to defend your right to use the name in that specific area you already use it. Forget about expanding.

A good example of what may happen if you neglect to invest $325 in your own brand can be seen in the case of one of my favorite restaurants in Chicago: Japonais. I first read about the case on David Donaghue’s Chicago IP Litigation Blog.  Japonais is a modernized Japanese fusion restaurant situated in a renovated warehouse along a canal in downtown Chicago.  I have eaten there on numerous occasions, and consider it to be one of my favorite spots in the city.  Apparently, Japonais didn’t think their restaurant was worth $325, because they failed to register their name since its opening in 2003.  In 2004, they expanded to New York and Las Vegas, around the same time that someone else decided to register the Japonais mark, under restaurant services, with the USPTO. 

Chicago’s Japonais filed suit, but it was too late.  The defendant, who filed an “intent to use”, although junior with respect to using the name in commerce, survived summary judgment, and may even supersede Japonais’ right to use the name in New York.  To this end, Donaghue adds the following:

 . . . to the extent plaintiff had actual notice of defendant’s application, any rights plaintiff might have had in New York would not be enforceable against defendant. Furthermore, the Court noted that granting plaintiff’s motion could result in the bizarre outcome of defendant being liable for violating plaintiff’s trademark today, but tomorrow, after issuance of defendant’s mark, defendant may be able to assert the trademark against plaintiff.

I would have liked to visit the New York or Las Vegas locations.  Between the two of them, and my numerous visits to the Chicago location, I’m pretty sure that I would have spent $325 with the business.