Does My Friend Have Rights to Restaurant Name?

Dear Rich: I have a friend who was hired as an independent contractor to essentially revamp a restaurant's image. The restaurant is part of and owned by a hotel. During the course of work, my friend created a new name and logo for the restaurant. Their one page agreement mentions nothing about granting intellectual property rights and in fact, they never spoke about changing the name of the restaurant but when he came up with new name and logo, they liked it and continue to use it a year after his employment with them ceased. My friend still sees advertising and press releases for the restaurant making the name/logo a prominent part of the ads. Does my friend have any trademark protection? Let me add that neither he nor the restaurant owners registered for trademark or copyright protection. If my friend registered now, would that give him more legs to have them stop using the name/logo?We've got some loose ends here. Assuming your friend had some rights to the name and logo (and we're not sure he does), why does he want to stop the hotel/restaurant's use of the name and logo? Does he feel he's entitled to more compensation for his work? Is he planning to start a rival restaurant? Why has he waited a year to complain?

Rights to the name. We're primarily concerned with trademark law here. And based on trademark law, your friend has no rights to the name. Trademark law doesn't care much about who created a name ... it only cares about who's using it, and in particular, who used it first (in this case for restaurant services). Your friend would be unable to register the trademark because he's not using it in commerce and it doesn't seem like he has any intention to use it for restaurant services. Therefore, (and because copyright law doesn't protect names or short phrases), your friend doesn't have any claim to the name. It doesn't sound like there's a contract issue either because he was apparently paid to revamp a restaurant's image and arguably, changing the name and logo is part of the image. (By the way, as you can imagine, restaurants can get very litigious when it comes to naming rights.)

Rights to the logo. As for the logo, the same rules as used for the name (above) would probably apply if the logo was simply a stylized version of the name -- that is, basically  some fancy font work. If the logo is more than that, perhaps a drawing or sketch, something "artistic" like this, then your friend may have a claim under copyright law. He would need to demonstrate that the work was sufficiently original and he should consider filing a copyright application. However -- don't you hate it when there's a "however" -- even without an assignment of copyright, the restaurant probably has a reasonable argument that your friend granted what's called an implied license to use the logo. Under this theory, the restaurant might have limited rights to use the logo but would not own the copyright in it. The implied license theory is also strengthened by the fact that your friend has been aware of the use for a year or so and never complained. We're not guaranteeing either that the logo is copyrightable or that the implied license theory will fly (we are lawyers, remember?) but those are the ways these disputes sometimes play out. 

How your friend can handle it in the future. If your friend wants to avoid this outcome in the future, he needs to establish that in his contract -- for example, that he shall be paid a fixed amount if the name is used, etc. Or, alternatively, that if his logo is chosen, he shall receive a bonus. Practically, that's probably not an option unless your friend is in the upper echelon of restaurant consultants.

Great restaurant names. What makes a great restaurant name? Here are a few examples (we love Tequila Mockingbird) and here are some not-so-great-choices (Hmm .. not sure about "A Taste of Greece").