Trademark on bar with similar name.

[Jashdon]

I work for a bar in Northern California called The Local Beer Bar that serves craft beer and snacks, no wine or liquor. We were recently contacted through our facebook page by a woman who owns a bar in San Diego, California called The Local Eatery and Drinking Hole. She claims to have a trademark on the name "the local" and is threatening to protect the trademark. Here is her message in full,

"is all respect to you business which looks amazing and thriving, I also own a bar and restaurant called The Local for the past 9 years in San Diego. We have strong beliefs in our registered trademarks and have absolute interests in protecting it. We are about to open a 2nd and 3rd location in California. "The Local" is registered trademark for bar and restaurant in California for the past 9 years. We plan on protecting it. I understand that this is not the way to contact a business- through facebook. We will find the appropriate address to send a letter. Thank you."

We are kind of wondering what to do next and if this is a legitimate threat. Can she sue us to change the name and would it really be worth the time and money she would have to spend to do this? Any advice would be appreciated. Thank you.

 

[justalayman]

what is her mark;

the Local

or

The Local Eatery and Drinking Hole


Generally, if the latter, it does not prevent somebody from using the Local or some other terms within her mark. Have you checked with the state to determine if she does actually have a either mark registered?

 

[Jashdon]

USPTO.gov search

This is the information returned from a search at supto.gov

Word Mark - THE LOCAL EATERY & DRINKING HOLE
Goods and Services IC 043. US 100 101. G & S: Restaurant and bar services. FIRST USE: 20021001. FIRST USE IN COMMERCE: 20021001
Mark Drawing Code (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
Design Search Code 12.03.04 - Faucets and fittings; Heads, shower; Shower heads; Spigots; Valves, water
26.11.21 - Rectangles that are completely or partially shaded
27.01.04 - Letters forming objects; Numbers forming objects; Objects composed of letters or numerals; Punctuation forming objects
Serial Number 78660972
Filing Date June 29, 2005
Current Basis 1A
Original Filing Basis 1A
Published for Opposition March 21, 2006
Registration Number 3103926
Registration Date June 13, 2006
Owner (REGISTRANT) Desiderio, Mina INDIVIDUAL UNITED STATES 2715 Fairfield St San Diego CALIFORNIA 92109
Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE EATERY & DRINKING HOLE APART FROM THE MARK AS SHOWN
Description of Mark The mark consists of a stylized L that is also intended to look like a bar tap.
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE

 

[Ohiogal]

This is the information returned from a search at supto.gov

Word Mark - THE LOCAL EATERY & DRINKING HOLE
Goods and Services IC 043. US 100 101. G & S: Restaurant and bar services. FIRST USE: 20021001. FIRST USE IN COMMERCE: 20021001
Mark Drawing Code (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
Design Search Code 12.03.04 - Faucets and fittings; Heads, shower; Shower heads; Spigots; Valves, water
26.11.21 - Rectangles that are completely or partially shaded
27.01.04 - Letters forming objects; Numbers forming objects; Objects composed of letters or numerals; Punctuation forming objects
Serial Number 78660972
Filing Date June 29, 2005
Current Basis 1A
Original Filing Basis 1A
Published for Opposition March 21, 2006
Registration Number 3103926
Registration Date June 13, 2006
Owner (REGISTRANT) Desiderio, Mina INDIVIDUAL UNITED STATES 2715 Fairfield St San Diego CALIFORNIA 92109
Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE EATERY & DRINKING HOLE APART FROM THE MARK AS SHOWN
Description of Mark The mark consists of a stylized L that is also intended to look like a bar tap.
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE

Don't have your sign have the stylized L that is also intended to look like a bar tap or with the same coloring and style. You can call your place the Local something or other so long as you are not affiliating it with their business.

 

[Jashdon]

Bold Typeface

Does the fact that the words "The Local" are in bold have any significance?

 

[justalayman]

This is the information returned from a search at supto.gov

Word Mark - THE LOCAL EATERY & DRINKING HOLE

so, her mark isn't "the Local" but "The local eatery and drinking hole". I was looking for "the Local".

I would wait for formal contact. At that point I would respond that I am not using her trademark: the local eatery and drinking hole but something quite different: The Local Beer Bar.




I believe she would be reaching a bit if she claims there would be confusion between those two names.

 

[justalayman]

Does the fact that the words "The Local" are in bold have any significance?

Did you search for "the local" on the Tess page? If so, it is highlighted because that was your search term.


when I search for the entire term, I get this:

Word Mark THE LOCAL EATERY & DRINKING HOLE
Goods and Services IC 043. US 100 101. G & S: Restaurant and bar services. FIRST USE: 20021001. FIRST USE IN COMMERCE: 20021001
Mark Drawing Code (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS

 

[LdiJ]

so, her mark isn't "the Local" but "The local eatery and drinking hole". I was looking for "the Local".

I would wait for formal contact. At that point I would respond that I am not using her trademark: the local eatery and drinking hole but something quite different: The Local Beer Bar.




I believe she would be reaching a bit if she claims there would be confusion between those two names.

I agree. That is a really a reach. Just make sure that your logo is not similar to hers. I have actually been through a trademark battle with a similar type of situation. Different industry but similar stuff. The real problem with trademark battles is that they can be expensive once you have to get lawyers involved. If you are fighting a big corporation, with deep pockets and salaried attorneys on hand, then it can get expensive enough that small businesses just tend to give in. However it does not sound like you have that situation. It sounds like the opposition is someone who is doing well enough that they want to expand, but are unlikely to have those kinds of "deep pockets".

Just continue on as you are doing until or unless something is actually filed in court. If your logo isn't similar to theirs its not very likely that they could prevail. "The Local" is common verbiage.