Trade Dress Lessons from a Pizza Franchisor

A former investor in a pizza chain franchise sold his shares and invested in his own pizzerias. The pizza chain (Happy’s Pizza) sued the former investor (Papa’s Pizza) alleging unfair copying of its restaurant design and menu. Its décor included granite countertops, art tabletops, ceramic floors and tiles, back-lit pictures of food on the menu and stainless steel shelving, all design elements that were functional or generic in pizzerias and restaurants. The court ruled against the chain franchise, holding the décor theme was not inherently distinctive, and therefore, not protectable under trade dress law. Since the design elements were common, customers would not identify the design features with a single source. The décor did not scream “Happy’s Pizza” to general public. The first lesson of this case is to be so out of the ordinary in your décor design elements that it is immediately recognizable and distinctive to everyone walking through the door. This is not the time to keep up with the Jones, it is time to be the eccentric guy on the block.

The court also noted that menu offerings were generally named. The second lesson here is that uniquely named menu items will bolster branding efforts by creating an identifiable consumer association with a particular source. Everyone in Rochester knows where to get a Garbage Plate (Nick Tahou’s). When you hear “McRib sandwich” is there any doubt where to buy it?

The family of marks created by McDonalds with the “Mc” prefix are so recognizable to consumers that they enjoy an elevated level of trademark protection as “famous marks.” One way to create a family of marks is to use a common pre-fix or suffix. In Rochester (Roc City) you might see Lilac steak or Lilac cocktail on the menu at the fictional Rocfest Barbeque. However, there is a fine line. You need to be unique but prevent others from be so inspired by your names that they start copying them. In that case, you will no longer be unique.

Avoid superlative or laudatory terms for the best results. These have the potential to be denied trademark registration. For example, superburger, ultra wings, megasandwich and similar naming schemes will not offer the best trademark protection. Similarly, geographic terms are weaker marks: New England Chowder or New Orleans Gumbo are less distinctive to a customer than the W-up soda brand offered the regional grocery chain Wegmans. The “W” prefix is used successfully in a family of marks used by the family owned grocery chain.

Put your creative energy to work and develop a family of marks for your eatery. Transform your layout design elements to be unique and identifiable with a single source (you!) for a product or service.

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