You might have heard that Francis Ford Coppola and his family trust have sued a small restaurant in Novato, CA for trademark infringement over the use of the word “TAVOLA”. THE RUB: Coppola’s restaurant Rustic (located on his winery) has a Tuesday evening dinner promoted as “A TAVOLA” and 50 miles south a small restaurant in a shopping center renamed itself “TAVOLA ITALIAN KITCHEN”.
THE PLOT THICKENS… due to Coppola’s USPTO trademark registration of “A TAVOLA” [Reg. No 4002828 for Restaurant services]. Because a trademark registration vests the owner with exclusive use of the registered mark for the designated goods and services… Coppola has a claim against the small restaurant.
BUT THE KINK IN THE PLOT… is that the dictionary definition of the Italian word A TAVOLA , as defined on Coppola’s own website, means ‘to the table’:
“Meaning ‘to the table,’ a tavola is a casual dining experience …. [a] way of enjoying a meal. Like eating at your family’s home, there are no menus. Instead, our servers will come to your table offering an assortment of dishes, from the evening’s meat, poultry and fish selections to pastas, pizzas, salads and desserts.” ( at http://www.franciscoppolawinery.com/visit/dine/rustic/a-tavola)
Since a USPTO trademark registration vests exclusive use rights in trademarked terms, any trademark application should be rejected if the applied for trademark merely describes the goods or services. In this case, A TAVOLA (according to Coppola) means ‘to the table’ which is descriptive of sitting at a table for dinner. The reasoning behind this USPTO policy for not registering descriptive marks makes sense: 1) you can’t keep other folks from using regular dictionary words to describe their own products, nor 2) can you inhibit competition by owning a dictionary word.
The USPTO defines the statutory basis for refusing registration of merely descriptive trademarks on their website:
statutory basis (Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), TMEP 1209 et seq) for refusing registration of trademarks and service marks because the proposed mark merely describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. With regard to trademark significance, matter may be categorized along a continuum, ranging from marks that are highly distinctive to matter that is a generic name for the goods or services
The major reasons for not protecting descriptive marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods or services; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products. (at http://www.uspto.gov/main/glossary/index.html)
What happened here? How did Coppola get his trademark registration for A TAVOLA anyway? Don’t know. Perhaps there was ambiguity over the definition of the foreign word… although if the small restaurant can hang in there… it seems plausible that Coppola’s trademark registration could be revoked. I’m sure Coppola has his own side to the story and it does seems fishy that the small restaurant appears to have changed its name recently to include the word TAVOLA. If this is true then Coppola could claim that they are trying to appear associated with his restaurant. But the registration of a merely descriptive word as a trademark is a pretty serious no no. Undoubtedly the details are being hashed out now that a lawsuit has been filed.
If I lived close by to TAVOLA ITALIAN KITCHEN I’d go there for dinner to show my support (http://www.tavolaitaliankitchen.com/). Interestingly, they may be seeing a spike in business due to the lawsuit. The public is often keen to support the little guy in cases like this of trademark bullying.
See also: The case is Trustees of the Coppola Family Trust v. Torg Holding Corp., 12-cv-1646, U.S. District Court, Northern District of California (San Francisco); @iplegalfreebies and www.kasterlegal.com.
BY: Vanessa Kaster, Esq., LL.M.
ps: this post is dedicated to you Janet!!