Legal eagles

So, you're thinking about starting a new pizzeria. Here are a few tips to help you get started with and to help you avoid some potential pitfalls with your new undertaking. In this article I will discuss some basic concern involving brands, service marks, trademarks, logos and designs along with some other details associated with these topics.

Think About Your "Brand"

One of the best ways to promote and advertise your new pizzeria is to adopt a corporate "brand." A corporate brand is tied to the overall image you wish to convey to consumers about who and what you are. Various components play an important role in defining your brand, including the service marks and trademarks you select, and the look and feel of your restaurant design and products. An example of a service mark is "PIZZA HUT" for use in connection with "restaurant services." An example of a trademark is "THE OLIVE GARDEN" for use in connection with "salad dressings and soups."

Service Marks and Trademarks

Service marks and trademarks are words, names, symbols and designs which identify the source of one's services and goods. Service marks and trademarks can be extremely valuable corporate assets because they can tie words, names, symbols and designs with your business, your brand and the level of quality you offer. Selecting the appropriate service marks and trademarks is also extremely important as you want to avoid encroaching on the rights that others may have in a given service mark or trademark. A "service mark" is tied to services and must be used in connection with advertising or marketing literature – most pizzerias are in the business of offering restaurant services so they typically employ service marks. In contrast, a "trademark" is tied to products and must be marked on a physical product — some pizzerias offer physical products such as custom-blended bottled giardinaira so they may also employ trademarks.

Now that you have some background on the terminology, what tips can we offer for selecting service marks and trademarks for your new establishment? Different levels of protection are provided under the trademark laws based on the type of mark that is selected. From a trademark law standpoint, it is preferable to select a word or string of words which are "arbitrary" or "fanciful." These include coined words which are created by the mark owner such as "KODAK" or words which are used in association with services/products differing from the typcial dictionary definition such as "APPLE" for use with computers.

For many businesses such as pizzerias, there is a desire to select marks which are not as unique as the above examples but instead provide some connotation of the services or goods, which the pizzeria will be offering. For example, there may be an interest in using the term "PIZZA" or "ITALIAN" as part of the mark. By selecting a mark containing a term or terms which suggest that the restaurant will be Italian-themed, the mark may be regarded as a weaker one under the trademark laws. You may decide, though, that the strength of the mark is outweighed by the desire to use a term, which offers some indication that the restaurant will be Italian-themed, because of the marketing value gained by including a more descriptive term as part of the mark.

In addition to selecting a word or string of words for your new service marks and/or trademarks, you may also want to consider logos or design elements for use in combination with the word(s). A logo or design can be something simple like a creative representation of a pizza drawn by the store owner or something more complicated like a graphic commissioned by a graphic studio of the country of Italy with various graphic designs placed thereon. The addition of a logo or design to a weaker word mark can strengthen the word mark under the trademark laws and for branding purposes. The addition of a logo or design to a strong word mark can further strengthen the word mark.

Additionally, you may wish to consider a slogan to be used in combination with the word mark or the logo/design. An example of a slogan might be "We Are Your Local Pizza People." As with the word marks discussed above, the strength of the slogan will depend on the uniqueness and creativity of the phrase.

Once you have selected your service marks and trademarks – whether they be word marks, logos or designs, or slogans – you may wish to consult with an attorney for assistance in determining the availability of the marks you have selected. Again, this can be important as there could be a third party, who has prior rights in a service mark or a trademark you are considering, and, to avoid conflict, you may want to avoid use of that mark.One item which you may wish to consider is registering marks you have selected with a government agency. Depending on the proposed use of the marks and the similarity of the proposed marks to prior existing marks, your marks may be suitable for registration with either a state government or the United States federal government. You will need to consult with the rules in effect in your respective state to determine the registration requirements and fees associated with registration at the state level.

Information can be obtained regarding the process of registering a mark with the United States federal government at www.uspto.gov. The United States federal government, for example, charges $325 for an application filed electronically which covers one class such "restaurant services." If you consult with an attorney, there will be additional fees for the attorney's time which will vary depending on the services requested. For example, an attorney may charge in the neighborhood of $700 to file an application with the United States federal government. There are advantages to securing a registration with the United States federal government including the ability to use the federal registration symbol, ®, and the ability to prevent third parties from securing registrations for similar marks.

Look and Feel of Restaurant Design and Products

In addition to the words, designs/logos, and slogans you select as your service marks and trademarks, you will also want to give some thought to the look and feel of your restaurant and your products. In other words, what type of visual image do you wish to convey to your customers? It is possible that through long-term and continued use, you may be able to develop "trade dress" rights in some of your products and perhaps in aspects of your restaurant design. Trade dress consists of a product's packaging and those elements of the packaging that serve to identify the product presented to the consumer. Things that might be considered as part of the trade dress associated with your product packaging could include the color scheme, the design elements and the placement of these designs, the lettering style and size, etc. In certain circumstances, trade dress protection has even been expanded to cover the design and appearance of restaurants. Things that might be considered as part of your restaurant's trade dress could include the restaurant layout, the dining tables, the decorations, the menus, the music, etc. As with service marks and trademarks, the more representative the features are of an Italian-themed restaurant, the greater the hurdle that would need to be surmounted to establish trade dress protection. It is, however, possible that by lending some distinctiveness to the look and feel of your restaurant design and your products, you may be able to develop additional legal rights known as trade dress rights.

Think About Administrative Logistics

In addition to the source identifiying items discussed above including service marks, trademarks, and trade dress, you will want to give consideration to the logistics of starting your new establishment. For example, you will want to select a corporate name and will need to investigate its availability through your secretary of state. You will need to register with the secretary of state so that you can proceed to conduct business. The National Association of Secretary of States has a page of links to the various state offices at http://www.nass.org/ sos/sosflags.html. You will likely wish to consult an attorney to assist with the logistics of forming a legal entity such as a corporation or a partnership which is appropriate for your set of business circumstances.

I hope the above tips will give you something to "chew on" as you are thinking about your new pizzeria.