Losing your good name

Melissa Massie first discovered that she didn’t own the rights to her restaurant’s name when Sonic Drive-In accused her of violating federal trademark law.

Suddenly, the 26-year-old Spokane business owner found herself scrambling to find a new name for Sonic Burritos, the popular Gonzaga University-neighborhood hangout she purchased in 2003, or face a lengthy, expensive legal battle over the rights to keep the name.

Massie celebrated her restaurant’s name change to Ionic Burritos and Cosmic Quesos on Saturday with live music, cake and a burrito eating contest.

To other Spokane restaurant owners, the tale of two Sonics serves as a reality check and a warning to secure their names on a nationwide scale, regardless of whether they plan to expand.

Ask Noel Macapagal, owner of RAW Sushi and Island Grill, who received a letter in March from Arizona law firm Jennings, Strouss and Salmon, warning him of probable legal action from Scottsdale-based franchise RA Sushi.

“As soon as our client’s mark enters into the Spokane marketplace,” the letter read, “we will then be writing you a letter asking you to change the name of your restaurant, based on a claim of likely confusion between RA Sushi and RAW Sushi. Until that day you will be living on borrowed time.”

Macapagal’s first instinct was to fight. After all, RA and RAW are spelled differently, and the island focus of RAW, he says, separates it from the Arizona-based franchise chain.

But trademark battles boil down to “likelihood of confusion,” a gray area that courts measure by weighing factors including sight, sound, meaning, similarities between offered goods and other considerations.

“What we’re trying to avoid is to have consumers be confused to think that another restaurant is somehow related or associated with us,” said Glenn Bacal, who represents RA Sushi for Jennings, Strouss and Salmon. “And that goes for restaurants where if it’s audibly the same, even if the spelling is different, that could be a problem.”

When he opened RAW, Macapagal didn’t place much importance on trademarking because he had no intention of expanding outside the Spokane market.

Now Macapagal regrets that he didn’t run a preliminary trademark search to protect his business from outside challengers.

“You should know that people are going to come to this town,” he said. “That it has the potential for growth. That potentially outsiders, like a RA Sushi, like a Sonic, might come to town, and you should be aware of it. So it shouldn’t completely catch you off guard.”

Growth potential caused Bob Hemphill, owner of downtown Spokane’s Chicken-n-More, to change the name of his business to CHKN-N-MO for its expansion into Spokane Valley.

Hemphill lost the right to trademark Chicken-n-More in 2003, when Pete’s Chicken-N-More, in Corpus Christi, Texas, purchased the trademark for the name – 11 years after Hemphill opened in Spokane.

“When I talked to a lawyer about 10 years ago about trademarking the name, he said, ‘Naw, you don’t have to worry about trademarking it,’ ” Hemphill said. ” ‘No one’s gonna want that name.’ “

Now that he’s expanding his barbecue empire, Hemphill’s being more careful. His application for the trademark on CHKN-N-MO is in the processing stages.

At least one Spokane business owner doesn’t feel the need to brace herself against trademark woes as Hemphill has.

Though her downtown Spokane bar bears the same name and a logo typeface similar to that of a trademark applicant in Irvine, Calif., Reema Shaver sees no need to worry about battling for Bistango.Shaver discovered the Bistango doppelganger – whose federal trademark application was published for opposition in July of this year – while looking to register a URL for her Web site.

Bistango.com was taken by a nearly 20-year-old Italian restaurant. Rather than change the name of her fledgling bar, she chose a different Web address.

“My Web site will be bistangospokane.com,” she said. “I’m a martini lounge, they’re a very upscale Italian restaurant. They’re in California, I’m in Washington. Now, if I want to franchise someday, all I have to do is add an ‘s’.”

But Melissa Massie already tried that approach when she found out she couldn’t keep “Sonic.”

She tried spelling it with a ‘k.’ She tried calling it “UltraSonic.” Her lawyer told her no dice – it can’t sound like “sonic.”

“So at that point, we knew that I’m not going to lose the business to try to keep the name” she said. “It doesn’t make any sense.”

Fighting for one’s name, however, can be a natural reflex when challenged by an outsider. Macapagal thinks he has a case, and wishes he had the financial means to protect RAW.

“It’s the R-A-W versus the R-A,” Macapagal said. “It’s the sun god (RA) versus the Hawaiian hook. It’s the Asian cuisine versus the Island cuisine (RAW). And those are the subjective gray areas that I would fight.

“I’ll tell you the truth, if I had the pockets that (RA Sushi) had, I’d go toe-to-toe with them. Just like no one ever thought that O.J. (Simpson) would get off. I would fight the good fight. But I can’t afford to fight the good fight. To me that’s the tragedy of everything right now.”

If you ask Massie, being from Spokane counts for something when a local business goes toe-to-toe with a national chain. During the Sonic/Ionic name change, she received financial and moral support from other local businesses and the surrounding community. Sonic Corp., which owns Sonic Drive-In, also pitched in with an undisclosed amount. Bistango’s Shaver looks at that reaction and feels she would receive support from Spokanites if she were to face a similar problem.

“If the system takes it that way, I promise you, my customers will support me whether it’s called Lola, Bistango or Tom’s,” Shaver said.

“I think a name is important, but I think what you offer is a lot more important. And I think what you do with your business and how you offer it, and what service you give and what product you give is what’s going to make you who you are. Not the name.”

But, as always, the law has the last word.

Bacal, the attorney for RA, said, “You lose value when you trade upon, to any extent, a name that’s already owned by somebody else.

“That’s the very reason why it’s a good idea always to search before adopting.”