Restaurant name similar to a live trademark of another restaurant

[samkaz21]

Hello everyone,
I am planning on opening a restaurant in southern California under the name 'Garbonzai - Falafel Bar' which will be serving mediterranean falafels and flatbreads.

There is another restaurant within 30 miles under the name "Garbanzo Mediterranean Grill" which has their name trademarked as both a standard mark (just plain writing) as well as their actual logo. These trademarks have been established for quite a few years now. They make no claim to the 'Mediterranean grill' part so it is effectively 'Garbanzo' that is trademarked.

Our name, Garbonzai, is a fusion of garbanzo & a bonzai tree. We will be serving Mediterranean food but nothing that is grilled in any way, we pretty much have no meat products. I am a bit worried about proceeding with this name because it does bear a resemblance to Garbanzo.

There is nothing at all trademarked under Garbonzai and there are quite a few trademarked variations of Garbanzo (i.e. gogo garbanzo, garbanzo burger). Since garbanzo is a very generic word, would I be safe in proceeding with Garbonzai? Also, would it be more beneficial to trademark the entirety of "garbonzai falafel bar" vs "garbonzai"?

I know no response here will be representative of how it would hold up in court, I am just looking for some extra viewpoints on the situation. Thank you very much for your assistance.

 

[Just Blue]

Hello everyone,
I am planning on opening a restaurant in southern California under the name 'Garbonzai - Falafel Bar' which will be serving mediterranean falafels and flatbreads.

There is another restaurant within 30 miles under the name "Garbanzo Mediterranean Grill" which has their name trademarked as both a standard mark (just plain writing) as well as their actual logo. These trademarks have been established for quite a few years now. They make no claim to the 'Mediterranean grill' part so it is effectively 'Garbanzo' that is trademarked.

Our name, Garbonzai, is a fusion of garbanzo & a bonzai tree. We will be serving Mediterranean food but nothing that is grilled in any way, we pretty much have no meat products. I am a bit worried about proceeding with this name because it does bear a resemblance to Garbanzo.

There is nothing at all trademarked under Garbonzai and there are quite a few trademarked variations of Garbanzo (i.e. gogo garbanzo, garbanzo burger). Since garbanzo is a very generic word, would I be safe in proceeding with Garbonzai? Also, would it be more beneficial to trademark the entirety of "garbonzai falafel bar" vs "garbonzai"?

I know no response here will be representative of how it would hold up in court, I am just looking for some extra viewpoints on the situation. Thank you very much for your assistance.

Not legal but just a common sense kinda thingy...Can't you come up with a different and unique name? I would think it would save you potential legal issues.

 

[tranquility]

Such decisions are "sui generis" in that the question is unique and depends on what a court decides. To me? I don't think I would confuse you with the other establishment. Others will agree or disagree. If you can articulate a reason why the name, that could change some opinions. The real answer is, who knows? (Part of the problem of IP law.)

If you are actually starting a business, it seems reasonable to get legal advice from an attorney who can review all the facts in your area. If "Garbanzo Mediterranean Grill" is actually a great place to eat and "Garbonzai - Falafel Bar" is completely unrelated to you in some way, it tilts the balance away from you. Not necessarily enough for you to lose, but, a tilt. If you are Nico Garbonzai, not so much. Not as a matter of law as the reason is irrelevant under the statutes. But as a matter of reality. If there is litigation, a fact finder will determine if there is confusion. I guarantee you, they are less likely to do so if there is some rational reason for the name over a desire to be close, but not quite.

 

[quincy]

Hello everyone,
I am planning on opening a restaurant in southern California under the name 'Garbonzai - Falafel Bar' which will be serving mediterranean falafels and flatbreads.

There is another restaurant within 30 miles under the name "Garbanzo Mediterranean Grill" which has their name trademarked as both a standard mark (just plain writing) as well as their actual logo. These trademarks have been established for quite a few years now. They make no claim to the 'Mediterranean grill' part so it is effectively 'Garbanzo' that is trademarked.

Our name, Garbonzai, is a fusion of garbanzo & a bonzai tree. We will be serving Mediterranean food but nothing that is grilled in any way, we pretty much have no meat products. I am a bit worried about proceeding with this name because it does bear a resemblance to Garbanzo.

There is nothing at all trademarked under Garbonzai and there are quite a few trademarked variations of Garbanzo (i.e. gogo garbanzo, garbanzo burger). Since garbanzo is a very generic word, would I be safe in proceeding with Garbonzai? Also, would it be more beneficial to trademark the entirety of "garbonzai falafel bar" vs "garbonzai"?

I know no response here will be representative of how it would hold up in court, I am just looking for some extra viewpoints on the situation. Thank you very much for your assistance.

I recommend you come up with a completely different name for your falafel bar.

By using "Garbonzai" for your restaurant, consumers are likely to confuse your restaurant with the one that was established years ago under a very similar name. It appears to me just from what you have posted (and it will probably appear to Garbonzo attorneys as well) that you chose the name Garbonzai for the sole purpose of trading off Garbonzo's success.

When consumers are looking for a place to eat, they are likely to say, "Let's go to Garbanzo's" and not say, "Let's go to Garbonzo's Mediterranean Grill." They would, likewise, not be calling your restaurant by the full "Falafel Bar" identifier.

Garbanzo and Garbanzai are just too similar in looks and sound and offered services, and all it takes for your chosen name to cause you difficulty is for the other restaurant to believe it will cause difficulty. There is no reason to put yourself at the risk of a lawsuit. A lawsuit is a really bad way to start off a new business.

There are thousands of names from which to choose and so, again, I recommend you come up with a new name. Running all of this by an IP attorney in your area is never a dumb idea.

Good luck.


edit to add:
There are 12 live federally-registered trademarks using the word "Garbanzo." Five of these trademarks are held by Garbanzo Mediterranean Grill, LLC, in the restaurant and bar services class, with the first mark registered in July 15, 2008. There are Garbanzo Mediterranean Grills throughout the US.

The other seven registered marks are Garbanzo (apparel), Garbanzo Taxco (fresh chickpeas), Garbanzo Extravaganza (processed vegetables), Gonzo Garbanzo (bean sandwiches), Garden Green Garbanzos (frozen vegetables) and Garbanzo Gourmet (bean dip). There is also Super Garbo (frozen vegetables). None of these compete with Garbanzo Mediterranean Grill in the restaurant/bar class.

Because your proposed Garbanzai would be a Garbanzo restaurant/bar services competitor, your use is likely to attract unwanted attention from Garbanzo Mediterranean Grill, LLC.