Sufferin' Trademarks: The Trademark Dispute Over The Word Succotash
from the generic-defined dept
If there is a common theme that runs through much of the posts we do on trademark disputes, it’s that the ultimate responsibility for them lies at the feet of a USPTO that’s only too willing to grant privilege on words and terms when it should not. The examples of this abound, from a video game trademark on the term “candy” to trademarks being granted in the entertainment market for the word “live.”
And now we can add to this list that the USPTO apparently granted a trademark for the restaurant industry to a company on the word “succotash.” This came to light when that company, Knead Hospitality + Design, sent a cease and desist notice to Beth Barden, who runs a restaurant in Kansas City that goes by the name Succotash.
Barden learned via email that Knead Hospitality + Design filed a trademark registration for Succotash and requested she remove the trademark symbol from her website. But the D.C. company’s move has bigger implications: The filing gives it the nationwide right to use that trademark in connection with bar, catering and restaurant services. If Barden wanted to expand or franchise outside the Kansas City area, she could be subject to trademark infringement, said Cheryl Burbach, a partner in Hovey Williams LLP, an Overland Park intellectual property law firm.
“All of a sudden, your name isn’t yours anymore,” Barden told the Kansas City Business Journal. “It’s a little terrifying because clearly they have more money than I have, more opportunity to fight this thing than I do.”
Now, notably, Barden’s restaurant is over a decade old, while Knead Hospitality + Design came to be only in 2014. As such, Barden likely has all sorts of protections available to her via common law trademark rights. She has hired an attorney to fight the C&D… and to get Knead’s registration cancelled. And that really should happen, because allowing a trademark in the restaurant industry that consists entirely of the name of a common dish is insane. So insane, in fact, that that’s the reason why Barden herself never even bothered to attempt to register the trademark herself.
Barden said she never registered a Succotash trademark because she didn’t think a common vegetable dish could be trademarked. Even so, Barden is considered a senior user who owns prior common law trademark rights in the Kansas City area. Knead filed its trademark application on March 14, 2015, well after Barden began using the name in Kansas City.
Her naiveté would be quite sweet, had it not led to her now having to pay an attorney to keep a trademark bully with a mark that never should have been granted in the first place at bay. Which brings us all the way back to the original point: if the USPTO can’t be bothered to think about a trademark application for long enough to realize it never should have granted this particular mark, the time for new oversight is at hand.