Interface: Bobby Ghajar

An intellectual-property lawyer explains why creating a specific trade dress enhances brand identity and can offer protection in court.

By Christine LaFave, Associate Editor -- Restaurants & Institutions, 10/1/2007

When Rebecca Charles, chef-owner of Pearl Oyster Bar in New York City, sued a former sous-chef in June for intellectual-property theft, a new spotlight was shone on the evolving area of intellectual-property law for restaurateurs. Charles claims in her suit that former colleague Ed McFarland copies her restaurant in everything from décor to a recipe at his Ed’s Lobster Bar, also in New York City. (McFarland refuted the claim later that month in a press conference.) But how can restaurateurs identify a legal line between concepts that are similar and those that are virtually indistinguishable? Bobby Ghajar, an intellectual-property attorney with Howrey LLP in Los Angeles, says that restaurateurs concerned about protecting the look and feel of their restaurant need to define exactly what makes their concept unique.

Q. In the Pearl Oyster Bar case, how would Charles prove the claim of intellectual-property theft?

A. The plaintiff is going to have to establish that [she] developed a protectable trade dress. The trade dress will be comprised of different, distinct elements [of the restaurant] and put into a total package that is memorable and has what the courts call secondary meaning, so that when you talk about all of those elements together, you think about the plaintiff’s restaurant. So if they’re claiming that their trade dress is made up of certain tablecloths, a certain style of menu, a certain style of shirts that the servers wear, you’re going to have to look at all of those elements to see if the defendant also features those.

The other thing here is that the defendant was a former colleague of the plaintiff’s. These are trademark cases, and in a trademark case, one of the things that you prove is likelihood of confusion. Part of the likelihood-of-confusion analysis looks at intent. When you have a former sous-chef who has left your restaurant and started a competitive restaurant, he or she should have known and would have known all of the elements that make up your trade dress. So there’s going to be an intent issue, whether that sous-chef purposely tried to knock off those elements knowing that they were distinctive.

Q. What kind of precedent is there as far as trade-dress protection for restaurants?

A. The big case that started this discussion was a case that went all the way up to the Supreme Court. That was the [Two Pesos v.] Taco Cabana case [in 1992]. The Supreme Court was looking at the trade dress of the Taco Cabana restaurant, and [Taco Cabana] described it with a bunch of elements: a festive eating atmosphere, an interior dining and patio area that could be decorated with artifacts, bright colors, paintings, murals. They talked about the patio and how it was configured, and how the exterior of the building had a festive and vivid cover scheme, and the borders and the awnings and the umbrellas and where the salsa bar was. Another company had potentially knocked that off, and the Supreme Court was focused on analyzing whether Taco Cabana could have a protectable trade dress, and it found that it could.

Q. What should a restaurateur consider in deciding whether to take legal action against another restaurant owner?

A. I think these are very tough cases to prove, and plaintiffs would be best served to really look at whether A) they have something protectable and unique and B) it’s worth the cost.

Litigation is not cheap; there have been surveys done that show that litigating these cases can cost anywhere from $250,000 on up to $850,000. Litigation is not quick, either; in the best-case scenario, a case will go to court in a year or a year and three months. So I think what you have happen is you have the initial saber-rattling after you file a complaint, and then the parties come to some understanding.

Q. What else should restaurant owners know about trade-dress protection?

A. It applies only to the potential defendant’s use of elements that overlap substantially with the plaintiff’s. So if I’m claiming that my trade dress has 10, 12 elements, and a defendant only has quote-unquote borrowed three of them, that is probably not sufficient overlap.

I think on a proactive basis, restaurants want to think about being original, putting together distinct elements. Then, if they really would like to have something that’s protectable, be sure that consumers associate those with the restaurant. Sometimes you can be explicit. You can say "You know you’re in XYZ restaurant when you see blank." And by telling them to look for these things, you are educating them that those elements are part of your restaurant’s look and feel; therefore, they’re part of your trade dress. [Do] something so that consumers come to know that those elements are associated with your restaurant. That’s what you’re going to have to prove if you ever litigate.