Protecting restaurant name, decor and floor plan requires distinctive, unique, and creative elements

Miller’s Ale House, Inc. (“Miller”) sued Boynton Carolina Ale House, Inc. (“Boynton”) alleging Boynton infringed Miller’s common law “Ale House” trademark, trade dress in its restaurant decor, and copyrights in its floor plan. With respect to Miller’s claimed “Ale House” trademark, the court found that it was not distinctive based on a prior court decision eleven years earlier finding the words “ale house” to be generic words for a facility that serves beer and ale, with or without food, just as are other similar terms such as “bar,” “lounge,” “pub,” “saloon,” or “tavern.” The court acknowledged the legal possibility of trademark rights attaching to terms previously found to be generic, there was insufficient evidence to support that finding in this case.

The court also found Miller’s alleged trade dress was not inherently distinctive and thus not eligible for protection. To be eligible for protection as “inherently distinctive,” the court considers whether the trade dress elements are a common basic shape or design, whether they are unique or unusual in a particular field, and whether they are a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods. The court considered Miller’s trade dress claims to be mere refinements of a commonly-adopted form of ornamentation. Boynton made no argument supporting a finding of distinctiveness based on acquired secondary meaning, so the court did not consider this possibility.

The court focused Miller’s copyright infringement claim on the issue of whether a reasonable jury could find the competing designs substantially similar at the level of protected expression. Reiterating that copyright in architectural works is thin, the court found no substantial similarity between the floor plans of Miller and Boynton.

Restaurant operators should keep in mind that these trademark, trade dress and copyright claims are very fact-sensitive. Choosing an inherently distinctive mark and decor are important to protecting a restaurant’s trademark and trade dress rights. And, a showing of more than similarities in the general layout of rooms is required to establish copyright infringement in a restaurant’s floor plan.

Case Name: Miller’s Ale House, Inc. v. Boynton Carolina Ale House, Inc.

Date: December 20, 2012

Jurisdiction: Eleventh Circuit Court of Appeals

Case Type: Common Law Trademark, Trade Dress, Floor Plan Copyright

Case Status: Defendant’s motion for summary judgment

Trial Court: Granted defendant’s motion for summary judgment and dismissed plaintiff’s claims

On Appeal: Affirmed