Friday, March 25, 2011

Food Services Biz Wants Same Name as Clothing Store

Dear Rich: We want to open a catering/restaurant business and we have a name that we love, but there is a store (clothing/home furnishings store) in San Francisco that has the same name. We obviously don't want to step on anyone toes. What do you you think? While our staff was preparing this answer we overhead a conversation between two commuters about Fritos. Apparently Fritos brand original corn chips are a good item to take camping (or in an emergency kit) because there's so much oil in the chips that you can use a few to start a camp fire. Who knew? Apparently everybody.
Right, you had a question. As a general rule, your trademark gives you rights for your class of products or services, or for products or services which you are likely to expand into. (The rationale behind all this is that consumers are not likely to be confused between different types of businesses.) So, you're fine to use the same name for your food services business even if another company is using it for its clothing store.  It's true that some clothing stores offer food services -- we use to love eating lunch at Espirit -- and it's true that home furnishings stores may offer food, too -- people seem to covet IKEA's Swedish meatballs. But as a general rule, that type of expansion is rare and usually limited to large chain stores. So always stay away from marks that are famous and owned by conglomerate type-entities.
The bigger picture. Nowadays, it's often not just local businesses that one has to be concerned about. If you're competing on the web, or hoping to expand your business beyond San Francisco, you'll need to check out national uses of the name. We checked your proposed name in the USPTO database and a Florida company has registered it for bar and restaurant services. That doesn't mean you can't use it locally -- the Florida trademark owner may never even learn of your use or care -- but it could become an issue and you might have to change your name if sued (particularly if you can't afford to defend the lawsuit). You could probably avoid those hassles by personalizing the name. For example, let's say you wanted to use PATIO and someone in another state had registered it for food services. You'd probably be okay calling your business, Maggie's Patio or Patio & Potatoes (the Dear Rich staff dreams of a potato-only cuisine). In other words, it's all about distinguishing your name from the competition. That should also make it easier for you to stop others in the event somebody wants to copy your name.