You Can't Jam The Terrorist's Phones Without Jamming Everybody Else's

Even Restaurant Critics Are Recognizing How Trademark Is Being Abused

from the forge-this dept

Mon, Jan 12th 2009 10:22pm — Mike Masnick

Reader Glenn points us to a blog post by NY Times restaurant critic Frank Bruni, where he points out just how ridiculous it is that a restaurant in NY is being forced to change its name over a trademark dispute. The restaurant was originally called Forge, shortened from owner Marc Forgione's last name. However, a restaurant in Miami called The Forge sued Forge claiming a trademark violation, saying: "You can't open a restaurant on somebody's coattails. It's just not legal."

Well, first of all, it's actually perfectly legal to open a restaurant on somebody's coattails. See all those different pizza places or fast food joints? They all started somewhere, and others copied the idea -- and we all think that's a good thing, because it's called competition. But, more importantly, there's no indication whatsoever that Forge was even remotely riding on The Forge's coattails, or that any diner in New York would somehow be confused that Forge was somehow connected to the (very different style) Miami restaurant. As Bruni writes:

How likely is it, really, that a patron of the Miami Beach restaurant The Forge is going to be looking for an offshoot of it in New York, when the Miami Beach restaurant hasn't advertised or promoted such an offshoot?

How likely is it that, among the gazillion restaurants in New York, this patron will find his or her way to Mr. Forgione's Forge and, after looking at its rustic, brick-walled setting, mistake it as a sibling to a place in Miami Beach whose waiters apparently wear bow ties?

How many diners are really going to be lining Mr. Forgione's pockets with money that rightfully belongs near the Everglades, or making assumptions about The Forge in Miami Beach based on meals at Forge in TriBeCa? Especially in an Internet era when diners are better informed than ever?

When trademark disputes are even getting angry rants from food critics, you have to think something is seriously wrong with the way trademark law is working these days.

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Filed Under: restaurants, trademark

17 Comments

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Anonymous Coward, 12 Jan 2009 @ 10:53pm

when read: Even Restaurant Critics Are Recognizing How Trademark Is Being Abused.

I thought a restaurant is using / trying to use "trademark infringement" to silence a bad critic.

that story is no surprise its somewhat similar to the Monster lawsuits.
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chronos, 12 Jan 2009 @ 10:56pm

Can The Forge actually win this? I mean, it's the guy's name, for crying out loud!
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PhillD, 12 Jan 2009 @ 11:00pm

What a surprise!
More bad advice from a lawyer that gets paid by the hour? Are we surprised? Trademark cases are a slam dunk payday for lawyers! They get paid win or lose and lets face it, trademark law is so easily abused by those with a mortgage payment to make and the morals of a scorpion.

(sorry if I seem extra cynical today)
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tim, 12 Jan 2009 @ 11:11pm

ummm...
is there a penalty for submitting false trademark infringment notices? maybe there should be a clause to this effect... and if the notice is made on the lawyers advice, the lawyer becomes equally liable.
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Tamara, 12 Jan 2009 @ 11:39pm

They could easily win, as the US system is just as stupid as Australia's. In Australia Burger King is called Hungry Jacks (as Burger King was registered to someone else when they came into the Australian market). There was a general takeaway store (selling sandwiches, pies, etc) called Jack's (that was the owners name). He advertised in the local paper "Hungry? Come to Jack's." Hungry Jacks sued the store, because the advertisement could cause people to mistakenly think that it was an advertisement for Hungry Jacks. HJ's won the case plus compensation, which forced the other store into bankruptcy. If HJs won that case then this case could also be won by the Miami restaurant.
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Anonymous Coward, 12 Jan 2009 @ 11:57pm

God bless America, Land that I love.
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Anonymous Coward, 13 Jan 2009 @ 12:06am

But in the end both restraunts got more free advertising from the coverage
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Joe, 13 Jan 2009 @ 12:52am

deniro's
up here in Vancouver we have a restaurant that was known as deniro's. nice place, trendy, etc. It was named as a homage to the great actor. After a few years in business, they got a letter from one of mr deniro's lawyers stating they were in violation of (of all things), section(3) of the british columbia privacy act. They've since renamed the restaurant section(3) and are doing quite nicely.

http://www.sectionthree.com/trailer.html

In the end, i think that while this above Forge lawsuit is silly, they will gain more in the publicity then they'll lose in a name change.
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Anonymous Coward, 13 Jan 2009 @ 1:08am

Re:
im pretty sure a trial costs more than advertising.
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Monarch, 13 Jan 2009 @ 5:01am

Re: deniro's
I don't doubt Deniro was a jerk about it. I once watched Mr. Deniro have an extra fired from a movie shoot, just because the extra looked at him. From my limited experience around him, he's quite an arrogant jerk.
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hegemon13, 13 Jan 2009 @ 6:40am

Is it even a competing market?
Sure, both places are restaurants. But, if The Forge of Florida has no business operations in New York, is the Forge of NY even in a competing market? I sure wouldn't think so. If not, there is no reason nor obligation to protect the mark.
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Xiera, 13 Jan 2009 @ 6:54am

To Mr. Masnick
You have the same first name as me. It is clear that people could be confused by our similar names and the fact that we are both people. Please change your name or pay me for damages caused by said confusion.

(I made me giggle.)
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Ben, 13 Jan 2009 @ 7:42am

First of all, you have to be engaged in interstate commerce in order to have a federally registered trademark. I live 2 blocks from another restaurant named the Forge, named for the Revolutionary-era iron industry. There is no confusion whatsoever.

Who would've thought there would be a trademark dispute over restaurant names in the city that brought you Ray's Pizza on just about every corner.
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Dave, 13 Jan 2009 @ 8:57am

Class
I'm glad you're pointing out how stupidly trademark law operates in practice, and good for Frank Bruni.

I'm gonna jump on the bandwagon, because 62% of Chinese restaurants are named Great Wall, and I came up with the idea first, so this will make me set for life.

It becomes a class thing, because only idiots who can afford legal representation can engage in this crap. And when the idiots win, the big guy crushes the little guy. A variation on the Walmarting of America.
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possibilities, 13 Jan 2009 @ 10:53am

possibilities
We have a restaurant in a old blacksmith shop here in my small town called the Forge. A Google search "forge Restaurant" turned up about 18,000 hits. If 5% of those are restaurants. Think of the litigation possibilities$$$$
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awa, 13 Jan 2009 @ 2:12pm

TM & Restaurants
This reminds me of a case from the 50s, involving a famous New York night club called the Stork Club. A dive in San Francisco later opened up with the same name. Different markets, vastly different kinds of bars, non-competitive. Yet the court ordered the SF dive to change its name under a "liklihood of confusion" rationale. However, we now recognize the decision as an early dilution case. That means that the court thought the the NY club was famous enough that someone seeing the SF dive might either be confused or think worse of the NY club. Also playing a role in the decision was that the name was deemed arbitrary enough that the no one would call their bar the "Stork Club" unless he/she was trying to ride someone else's coattails.

In the end, the famousness of the senior mark (the NY "Stork Club") and the arbitrariness of the name "Stork Club" for the name of a bar/club was enough to make the court think something fishy was going on. We can disagree with the ruling, but I'd bet you that the senior "The Forge" in this case will cite Stork Club to help make its case.
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known coward, 14 Jan 2009 @ 11:43am

i think the 21 club in NYC
was part of the same deal, a restaurant in a pittsburg stadium opened up in honor of roberto clemente (he wore # 21). The New York restaurant sued and won.

I use to drink in a place called "the old forge" i wonder if prior usage is any kind of defense.
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