Fun Trademark Application Question and Infrigement

[dmcgravey]

Here's a two-part hypothetical question:

My ONLINE restaurant's name is "Tony's Delicious Pizza"

1) If I want to be fully protected from someone even using "Tony's Delicious" or "Delicious Pizza" in their brand name, in order to gain maximum protection by securing my brand name from someone coming and creating say "Steve's Delicious Pizza", will I need to file a trademark application for "Tony's Delicious Pizza", "Tony's Delicious" AND "Delicious Pizza"? Or will the "Delicious Pizza" give me good coverage as it protects me from Joe's Delicious Pizza, Antonio's Delicious Pizza, etc and it helps me retain "Tony's Delicious Pizza"? What do you guys suggest?

2) If in the above, if I trademark both "Tony's Delicious Pizza" and "Delicious Pizza" and someone already has a website called deliciouspizza.com; can I file a trademark infringement against them? What if I have the trademark and they do not .... and ... even if I had the trademark and they did not ... do I need to prove that "Delicious Pizza" was first used by me? Who and what wins in the court of law?

What is the name of your state (only U.S. law)? NEVADA

 

[divgradcurl]

Here's a two-part hypothetical question:

My ONLINE restaurant's name is "Tony's Delicious Pizza"

1) If I want to be fully protected from someone even using "Tony's Delicious" or "Delicious Pizza" in their brand name, in order to gain maximum protection by securing my brand name from someone coming and creating say "Steve's Delicious Pizza", will I need to file a trademark application for "Tony's Delicious Pizza", "Tony's Delicious" AND "Delicious Pizza"? Or will the "Delicious Pizza" give me good coverage as it protects me from Joe's Delicious Pizza, Antonio's Delicious Pizza, etc and it helps me retain "Tony's Delicious Pizza"? What do you guys suggest?

A trademark is not a patent -- you can't stake out a claim, and then keep all comers out. Whether or not another pizza place using "delicious pizza" as part of their name would infringe on your mark would depend on the usual "likelihood of confusion test." As far as trademarking "delicious pizza," there are two issues -- first, you don't just "trademark" something -- trademark rights arise through use in commerce, so unless your pizza was sold, marketed and ultimately known as simply "delicious pizza," you would not be able to assert rights over that phrase alone. Second, such a generic phrase like that is typically not going to be enforceable anyway -- it is very, very hard to successfully claim rights to a generic phrase.

The suggestion would be to pick a name for your restaurant, and use it consistently, to acquire rights to your restaurants name. That's pretty much all you can do with trademarks anyway.

2) If in the above, if I trademark both "Tony's Delicious Pizza" and "Delicious Pizza" and someone already has a website called deliciouspizza.com; can I file a trademark infringement against them? What if I have the trademark and they do not .... and ... even if I had the trademark and they did not ... do I need to prove that "Delicious Pizza" was first used by me? Who and what wins in the court of law?

What is the name of your state (only U.S. law)? NEVADA

Se above re: trademarking a generic phrase. First, just to clear this up further, you obtain trademark rights through use in commerce. Period. You can register a trademark with the USPTO (and some states maintain their own trademark registries for companies in their state), but even if you are granted a registration, you don't actually have enforceable rights until you use the phrase in commerce. And the converse is true as well -- you can have trademark rights acquired through use in commerce without a registration. So, just because someone is using a particular name for their business, or a particular URL, without a registered trademark, doesn't mean that they don't have trademark rights.

Further, if, as you state, you obtain a registration and they were already using the same or similar name, they would still be allowed to use their name and URL. As a "junior" user of the mark, you cannot stop a "senior" user of the mark from using the mark. If the junior user registers the mark with the USPTO, the junior user can generally keep a senior user from expanding the scope of the use of the mark, but cannot stop the senior user from using the mark altogether.

 

[Alex23]

What's an online restaurant? Do you actually make pizza?

 

[dmcgravey]

Thanks divgradcurl for the thorough explanation on establishing rights to the phrase; in essence, it seems as if the trademark formality is trivial as it all boils down to who used the phrase first in commerce. As a footnote, the generic example used in this case here (Tony's Delicious Pizza) is merely an imaginary name I came up with as an alias to represent my company name which is actually more unique than the generic phrase being used here.

You mentioned: "Whether or not another pizza place using "Delicious Pizza" as part of their name would infringe on your mark would depend on the usual "likelihood of confusion test."

Well, our competitor is causing confusion amongst my clients.
The dilemma here is that our company's name is (example: Tony's Delicious Pizza) which our clients refer to our products/service as both as our company's 3 word name (example: Tony's Delicious Pizza) and also by the last 2 words of the company name (example: Delicious Pizza) is being violated by a competitor who is using the last two words of my company's name (example: Delicious Pizza) to sell the SAME product. Although the competitor was the first to establish a website (example: deliciouspizza.com) in the name of our company's last two words (Delicious Pizza), we believe we were the first to use the phrase in commerce. For historical reference, they sold the a similar product like ours under another website but as soon as our phrase caught on, they sold the same product on the deliciouspizza.com website. Which leads me to believe that being the pioneer in using the phrase commerce and marketing, wouldn't I have presiding rights over my competitor if they are using the name (example: "Delicious Pizza") given the fact that I was the first to use this in commerce?

At this conjecture, I believe the most ideal way to set up a defense if this goes to court is to file a trademark application for our company's name, that is both the 3 word (ex: Tony's Delicious Pizza) and the last two words which is the loose term that our clients refer to us as (ex: Delicious Pizza) and have proving documents that reveal that we were the first to use these phrases in commerce. What do you think?

What is the best approach in order to establish the rights to my phrase in order to either threaten or prevent my competitor from stirring up confusion amongst customers and stealing my share of business? And furthermore, when is an ideal timeline to have an attorney contact our competitor to refrain from selling their product under "Delicious Pizza"? Trademarks take up to 6-9 months and it would be nice to have a trademark in place before moving forward. Should we seek compensation for damages to our business as well?

I thank you in advance for your time. Thanks