Intellectual Property Considerations For Restaurants & Other Culinary Establishments

By Justin M. Jacobson, Esq.

As restaurants and other culinary establishments continue to form and grow, these companies begin to face new legal challenges similar to any other business.  While there are many matters a potential restaurateur must evaluate prior to forming or creating a culinary business, we are going to solely explore several intellectual property considerations.

One of the most important aspects of any restaurant or food establishment is their name.  A name is typically protected through a service mark or trademark.  Protection can apply to the particular name, a logo as well as any special or “signature menu items.”  For example, “ROOTY TOOTY FRESH ‘N FRUITY” (U.S. Reg. No. 3,433,997) is owned by I.H.O.P., “MOONS OVER MY HAMMY” (U.S. Reg. No. 1,946,766) is a protected menu item owned by Denny’s, McDonald’s “BIG MAC” sandwich (U.S. Reg. No. 1,126,102) is protected as well as the latest culinary craze, a “Cronut” (U.S. Reg. No. 4,788,108).

Additionally, a culinary company may utilize their name as both a service mark and a trademark.  This touches on the restaurant and potential “franchise” as well as licensing matters.  For instance, “T.G.I. Friday’s” (U.S. Reg. No. 2,963,202), also known as “Fridays” (U.S. Reg. No. 4,681,669), is a restaurant franchise who has also expanded into officially licensed frozen foods (U.S. Reg. No. 5,095,702), corn chips (U.S. Reg. No. 2,565,300), and pre-made cocktail mixers (U.S. Reg. No. 1,417,077).

Generally, placing a “TM” or “SM” next to a restaurants’ name, logo or menu item is an act of constructive notice to the public whereby the owner is claiming rights in the particular mark or logo.  A company’s trademark rights in a selected mark in the U.S. are strengthened with the filing of a federal application with the United States Patent and Trademark Office (U.S.P.T.O.).  In addition, many countries have their own trademark statutes to protect a mark in their country.

Another protection a restaurateur may pursue is filing a copyright registration for a logo as well as a unique menu design.  Copyright protection applies to the particular visual representation and prevents others from copying the work.  This is also beneficial if the owner wishes to create, sell or otherwise license any merchandise bearing the restaurant or food brand’s logo.

In addition, recipes cannot be copyrighted as it is a “mere listings of ingredients;” rather, “copyright” protection may […] extend to substantial literary expression [,such as] a description, explanation, or illustration […] that accompanies a recipe or formula.”  Instead, “secret” recipes, customer and vendor lists, and specific methods of preparing items in the kitchen can be protected as “trade secrets.”   In the United States, the U.S.P.T.O. defines that as any information “used in a business [that provides the owner with] an economic advantage over competitors who do not know or use the information.”  Trade-secret information “can include a formula, pattern, compilation, program, device, method, technique or process.”

For an owner to claim a particular recipe as a trade secret, the individual must take steps to ensure that the information remains confidential and secret.  Some steps a business can utilize to keep particular information “secret” is to have any employees sign agreements acknowledging it is “secret” and agreeing to keep it confidential; thereby, protecting the recipe.  These could include a non-disclosure and a non-compete agreement, which prevents the employee from revealing that information to anybody else, especially competitors.  The contracts usually contain provisions providing monetary penalties for violation of these agreements.  In addition, some restaurants take additional steps to keep certain ingredients or cooking procedures secret, which include having unique spices or other ingredients mixed separately by two different companies to prevent any third-party from learning the exact recipe.  Certain beverage companies have worked for years to preserve their exact formulas as secrets, such as Coca-Cola or the “Hand Grenade.”

Overall, a restaurant owner needs to be aware of the potential protections available to protect its unique assets.  These include trademarks and copyrights for protecting a restaurant name or logo, a menu item as well as trade secret law to secure any unique “secret” recipes, ingredients, or procedures from public disclosure and use.

This article is not intended as legal advice, as an attorney specializing in the field should be consulted.

© 2018 The Jacobson Firm, P.C.

About the author

Justin M. Jacobson, Esq. - Vice-President, The Jacobson Firm, P.C. - Attorney Specializing in Entertainment, Sports, Esports, Fashion and Art Law. In particular, The Jacobson Firm, P.C. handles Trademarks, Copyrights, Contracts, Estate Planning, Music Business and Brand Development on behalf of creative talent and lifestyle brands.

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