Florida Restaurateurs Face Off in Trademark Suit Over Frenchy’s Name

By Steve Brachmann
March 10, 2018

Florida Restaurateurs Face Off in Trademark Suit Over Frenchy's NameOn 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.

The Author

Steve Brachmann

Steve Brachmann is a writer located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He has become a regular contributor to IPWatchdog.com, writing about technology, innovation and is the primary author of the Companies We Follow series. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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  1. Scott Anderson March 11, 2018 12:05 am

    When I lived in Detroit an enterprising young man opened a hot-dog restaurant (these are prevalent in Detroit) and named it “Nicky D’s”, using a typeface for the sign on the restaurant that made it look a great deal like a common nickname for McDonald’s restaurants. McDonald’s sued and lost, and the offshoot was the young entrepreneur got a great deal of valuable publicity at no cost to himself. I haven’t been to that part of Detroit in several years but I believe he is still in business – and there is now a McDonald’s across the street from him.

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