How To Avoid A Trademark "Party Fowl"

Posted by Randy Michels on Jan 27, 2016 12:45:33 PM

Prince's Hot Chicken

Nashville is famous for being the home of country music, but it's developing quite a reputation as a culinary hot spot. This has helped raise the profile of one of Nashville's signature dishes: hot chicken.

The origins of hot chicken can be traced to Prince's Hot Chicken Shack. Thornton Prince was rumored to be quite the ladies man. After a particularly late night out, Prince's girlfriend cooked him a fried chicken breakfast with extra pepper as revenge. Prince liked it so much that he created his own recipe and opened the restaurant bearing his name in the 1930's.

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Hot chicken is now featured prominently around Nashville. Besides Prince's, popular hot chicken restaurants include Hattie B's and Party Fowl. Last year, I welcomed a trademark lawyer from New Zealand to town and introduced him to hot chicken at Party Fowl.

 

Kevin Hartley, Tim Walden, Randy Michels and James Michels at Party Fowl

So what does this have to do with trademarks? Party Fowl filed trademark applications to register PARTY FOWL in connection with clothing, glassware, coozies, cups and mugs, and restaurant services. Registrations for clothing, glassware, coozies and cups and mugs issued last month. The application for restaurant services, however, was rejected due to a likelihood of confusion with the previously registered trademark for PARTY FOWL WING SAUCE.

The United States Patent and Trademark Office (USPTO) examines every application for federal registration of a trademark for compliance with federal law and the Trademark Rules of Practice. One of the most common reasons for refusing registration is that a “likelihood of confusion” exists between the mark in the application and a previously registered mark or a pending application with an earlier filing date owned by another party. Other grounds for refusal can be found here.

A likelihood of confusion determination involves a two-part analysis. The marks are first compared for similarities in their appearance, sound, connotation and commercial impression. The goods and/or services are then compared to determine whether they are similar or commercially related or travel in the same trade channels.

With respect to the first part of the analysis, the USPTO concluded that the marks were similar in sound, appearance and meaning because the dominant part of each party's mark is the words "party fowl." With respect to the second part of the analysis, the USPTO noted that the applicant's services are "restaurants" and the registrant's goods are "chicken wing sauce." This led the USPTO to conclude that the goods and services are related because "restaurants" may offer "chicken wing sauces." The USPTO added that the conditions surrounding the marketing of the goods may be such that they could be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the services and goods come from a common source. Because of the similarities between the marks and the services and goods of the parties, the USPTO determined that a likelihood of confusion is created.

The takeaway for new businesses is to avoid choosing trademarks that are likely to be confused with already registered trademarks. Trademark searching is a critical first step in this process.

Want to know more about trademark searching? Sign up for a free trademark assessment to determine the availability of your trademark for registration. You can also schedule a free attorney consultation on our home page.

Author's Note: This post was originally published in May 2015 and has been updated for freshness, accuracy, and comprehensiveness.

Topics: Trademark Search

About This Blog

From their office in a meat packing plant turned creative community, the lawyers at Trust Tree craft articles on the importance of trademarks and the power of branding. When you visit our blog, you can expect lots of content related to those topics. Unfortunately, you can also expect lots of memes, lame jokes, bad puns, and shoutouts to Nashville. The goal of our blog is to help you learn a few things about trademarks in the least painful way possible.

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