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Intellectual Property in the Restaurant Ind.

By Kevin Hirson & Marc A. Lavaia, Warshaw Burstein, LLP

April 20, 2018

Intellectual Property law can be used to help new restaurants maintain a unique identity in a competitive market.

When opening a restaurant, advice can vary: “keep the menu simple,” “location, location, location,” “don’t skimp on the help.” Often overlooked is how to protect the elements that make your restaurant unique. Logos, interior look and design, and secret recipes are all issues to consider For some helpful advice, you can invite a friendly Intellectual Property (IP) attorney to tour your establishment.

Upon reviewing your logo, she would say, “I can help you obtain a U.S. Trademark Registration if you haven’t applied already. It’ll help to keep any copycats from poaching off your good name.” You decide to pocket the offer and move on with the tour.

When you walk her through the distinct design choices you made to the interior, she might say, “You should consider filing for Trade Dress protection. This interior is something unique, and we’re going to want to keep it that way when photos of this place begin hitting the blogs--especially if you’ve got plans for a second location.” You think back on all the hours spent poring over the layout and the furnishings, and know you wouldn’t want someone to up and copy it. You decide to take her up on her offer as you move towards the back.

To finish off the tour, you take her through the kitchen, showing off the industrious kitchen staff. As you leave she inquires, “You have a secret recipe for everything here, right? Have you disclosed it to any of the staff back there? That could be an issue if they ever decide to strike out on their own.” She continues, “trade secrets can be a tricky subject. And if you want to expand the operation, you’ll have to trust someone with the recipe eventually. Maybe I’ll write up a Non-Disclosure Agreement, just in case.” Perhaps a little more than advice is what’s needed here, so you clear a table and start talking about getting started.

“First, with the work you’ve put into that logo, I think you’re going to want some protection for more than just the words.” She helps you to put together a “Special Form Drawing” of the mark so you can get a little more enforceability on the design of the logo, specifically the way it’s stylized. She notices that you have a few different colors of the mark, for some merchandising options. She tells you that keeping the mark black and white can help to cover more color options. You let her know that you’ve had a soft opening, but the logo wasn’t ready in time. “We can just file under an ‘Intent to Use’ basis. Sign a few extra things for me and you should still be able to get the protection you need.” After a quick search to make sure there’s nothing out there that looks too similar, she helps you file a trademark application.

“Now, as for the design of this place; it’s a little unusual, and it doesn’t always pass review, but I could help you file a Trade Dress for the design of the restaurant as well. The hurdle here is going to be whether we can prove the design of this place is so distinctive and connected to the service of this restaurant that it could cause confusion if people saw a restaurant dressed up similarly.” You confirm that it would confuse your patrons to see any place dressed up like your restaurant. “Okay, well, I’ll need a few full shots of the restaurant and a word description of every design choice if you can manage it, but the process should be largely the same as for your logo.” A second application is filed, leaving just the matter of your secret recipes.

“Unless it’s really something out of left field, I’m afraid your options are limited once you disclose it to anyone else. Trade Secret protection is out the window if any other parties know. And for a Utility Patent; you’re going to have to disclose the secret to someone--at least me--so you can file it. A lot of restaurateurs choose instead to simply prepare any secret blends themselves, but if you need to share the secret with other staff, a Non-Disclosure Agreement is the best bet. A little confidentiality might just seal up any leaks in the operation.” You know that when you start expanding, you won’t have the time to prepare every batch of seasoning yourself. Maybe enforcing a little secrecy for the new hires would be best.

As she leaves, she gives you some questions to think about. Did someone else design the logo? Have you released any photos of the restaurant with the logo attached? Does your secret recipe come from a third party? Does that third party keep it a secret as well? What do you value more--secrecy or enforceability? Any number of these factors can change what you get to keep for yourself and what you may see at the next big restaurant opening.

This article was written to illuminate a few ways that Intellectual Property law can be used to help new restaurants maintain a unique identity in a competitive market. It was written by Kevin Hirson and Marc A. Lavaia, partners at Warshaw Burstein, LLP, with the enormous assistance of Andrew Choi, a student extern from Cardozo School of Law. For more information, Kevin Hirson can be reached at KHirson@Wbny.com or (212) 984-7782 for a consultation.

 

Marketplace: Warshaw Burstein, LLP
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