On February 20th, Clearwater Beach, FL-based restaurateur Frenchy’s Corporate filed a suit alleging trademark infringement against the owners and operators of Frenchy’s Pizzeria & Tavern, located less than an hour’s drive away from Clearwater in Port Richey, FL. The suit, filed in the Middle District of Florida, aims to protect Frenchy’s Corporate trademark rights to the unregistered trademark “FRENCHY’STM” under the terms of the Lanham Act.
As the complaint notes, the first Frenchy’s location opened in Clearwater Beach was Frenchy’s Original Café, which began operating in 1981. Between 1989 and 2013, Frenchy’s opened four more restaurants including Frenchy’s Saltwater Café, Frenchy’s Rockaway Grill, Frenchy’s South Beach Café and Frenchy’s Outpost Bar & Grill; all of these restaurants are located in Clearwater Beach except for the Outpost Bar & Grill located in nearby Dunedin, FL. These casual style restaurants all offer distinct menus following a general seafood theme. Frenchy’s also operates associated businesses such as Frenchy’s Stone Crab in Palm Harbor and others in Clearwater Beach. Frenchy’s argues that it has exclusively and continuously used the Frenchy’s mark for almost four decades and has earned substantial good will for its excellence in food service and tropical ambiance.
This January, Frenchy’s Corporate issued a cease and desist letter to the operators of Frenchy’s Pizzeria & Tavern prior to that restaurant’s grand opening in February. The cease and desist letter included a request to take down a website maintained by the defendants’ to market their restaurant location. After the defendants did not comply within 48 hours, Frenchy’s Corporate was successful in serving Blue Host with a takedown notice. The trademark action was filed because the actual Frenchy’s Pizzeria & Tavern location continues to operate.
Although Frenchy’s Corporate has not obtained a federal trademark to protect its rights to the Frenchy’s name, it is filing counts for trademark infringement and unfair competition under Section 43(a) of the Lanham Act. This statute allows a civil action to be filed against any person using any word or term in commerce when that use creates dilution or a false designation of origin. Parties asserting infringement for unregistered trade dress under this statute have the burden of proving that the claimed matter is not purely functional. Frenchy’s complaint also includes one count for violation of the Florida Deceptive and Unfair Trade Practices Act.
The defendants have not yet filed a response to the Frenchy’s complaint but an article on the story published by Tampa Bay Business Journal indicated that the operators of the allegedly infringing restaurant location feel fairly justified in their continued use of the name Frenchy’s. As co-owner and defendant Mark Spier notes, the restaurant was named after Andrea French, the other co-owner and defendant in the case. Spier remarked to the news outlet that, “You can’t trademark somebody’s name;” of course, you actually can do this if you plan to actually use your own name in commerce.