Trademarks

New York City restaurants are subject to intense competition.  These businesses work hard to establish and maintain their good reputations.  Why should anyone else benefit from that if they have not put the work in?  This is at the heart of a recent lawsuit filed by Katz’s Delicatessen of Houston Street Inc.

The famed Katz’s Deli has been serving genuine Jewish food in New York City for over 125 years.  The establishment is a landmark and has been featured in many movies and television shows.  Earlier this year, Katz’s Deli decided to do something about a Florida restaurant that was operating under a very similar name.  Katz’s Deli of Deerfield Beach, owned by Pump-A-Nickel Corp. Inc., is also selling Jewish foods, which makes it seem even more like the two restaurants are related in some way.  In the spring, Katz’s Deli sent a cease and desist letter to Pump-A-Nickel which they claim was ignored.  Katz’s Deli had no choice but to file a lawsuit against Pump-A-Nickel alleging trademark infringement and dilution (lessening the uniqueness of a trademark).  They claimed that Pump-A-Nickel was trying to unlawfully capitalize on their famous reputation and that this resulted in at least $1 million dollars in damages.  Katz’s Deli also argued that Pump-A-Nickel had engaged in cyber squatting by using the domain name Katzs-deli.com.

Consider this – you have developed a clear business plan, spent countless hours conceptualizing every aspect of the restaurant you want to open, and have invested hundreds of thousands of dollars to get up and running. You select a name which is near and dear to your heart. You prepare menus, business cards and signage, all of which look amazing. Your website is generating lots of traffic and you have been written up in both the NY Times and Page Six. You then receive a cease and desist letter advising you that you have stolen another restaurant’s name. You call your attorney only to discover that the other restaurant trademarked their name years ago, and that you have no choice but to start all over.