This can’t be the first time that Italian restaurants have fought over the rights to the name “Joseph’s.” So alas, history repeats itself in North Florida.  It all boils down to the question:  who is the rightful owner of a trademark?

Zek Leci learned this answer the hard way, when all fingers recently pointed at the budding entrepreneur.  Leci opened Joseph’s Italian Cafe in Jacksonville’s Southside.  He featured pizza and Italian food.  Unfortunately, he made the same mistake as many new business owners do:  rely on the Florida Department of State to tell him that he could use the name.

Across town, the owners of Joseph’s Pizza, are asserting their trademark rights.  Rose Bateh, and her daughters Sandra Hanania and Susie Bateh, own Joseph’s Pizza, a restaurant featuring Italian food.  You can see their corporate information at the Florida Department of State.  Because they are the first to use the name “Joseph’s,” they are technically the rightful trademark owners.  They can then stop anyone else from using a confusingly similar name for a related restaurant.  Joseph’s Pizza can even pull out the heavy artillary and sue Leci for trademark infringement.  They will need a registered trademark to do that.  They claim that they have one, but in searching “Joseph’s Pizza” at the U.S. Trademark Office’s database, I didn’t find it.

So why does the Florida Department of State tell business owners that they can use a name?  All that the State does is tell new businesses whether the exact name has already been taken.  They do not conduct trademark searches, nor do they offer opinions as to whether a new name is infringing or potentially confusing with an existing one.

To prevent crossing swords with another business and their legal team on proprietary issues, when starting a business, contact a trademark lawyer.  Have them conduct thorough trademark searches.  Have them advise you on choosing a strong trademark.  And once you have that unique name, logo, slogan, or other identifying feature, protect yourself by registering your trademarks.

Filed under: Trademarks by Yau Jo-Anne Monday, January 10th, 2011