2009 March: Whats in a Name?

2009 March: Whats in a Name?It’s not unusual for pizzeria owners to trademark their store’s names. But some owners are taking their quest for brand originality beyond the store sign and onto the menu by registering trademarks for distinctive offerings. Does registering a menu item trademark make sense for your business? Ask yourself these questions to determine if the legal legwork is a good investment for you.

First, is the name central to your brand or business strategy? Drew Militano started thinking about healthier pizzas long before it was trendy. In the early 1980s, the co-owner of Gerlanda’s in New Brunswick, New Jersey, fi rst experimented with a recipe for a wholewheat pizza dough.

“We fooled around with the recipe for a while, and our customers were liking it,” he says. “We just called it wheat pizza, though. Then one day I was by myself and all of a sudden, it hit me: ‘Wheatzza.’ I called my lawyer the next day to start the trademark process.” He was sure he wanted to protect the name not only because it so fittingly described his product but also because he saw future marketing potential in the catchy crust. “I felt it had value,” he explains. “I don’t know exactly what that value is in dollars, though we’ll know if I ever sell it. But it makes our brand unique. People search us out and say, ‘I’ll have a Wheatzza,’ or ‘make that one a Wheatzza!’ It’s great.”

Militano says when he first trademarked the name, the Wheatzza wasn’t exactly his top seller. But he’s gone from making about 50 Wheatzza crusts each week in 1984 to 50 a day in 2008. “I named my corporation the Wheatzza Corporation (and) my Web address is wheatzza.net,” he says. “I decided when I came up with this that this is mine and I want to make it a brand. We’re not just a little pizzeria around the corner; we have something no one else can say they have: the Wheatzza.”

Next, consider if you are in a hot competitive environment. The legal lightbulb went on for Michael Nicholson, owner of Glass Nickel Pizza Company in Madison, Wisconsin, after a someone approached him about opening an independent branch of Glass Nickel.

“This person decided he was going to open his own pizza shop, and he took the recipe for our best-selling pizza and named it something fairly similar,” Nicholson says. “At that point, we knew we needed to do something to protect our names.”

After contacting his legal counsel, Nicholson began the trademark process for his top-selling pie, a pizza with a chunky tomato sauce base that’s piled high with spinach, red onion, tomatoes, mushrooms, the Glass Nickel house blend cheese and topped with feta cheese. He had always called it “Fetalicious”, and he knew it was time to legally protect his best-seller’s memorable name.

“It was a light-bulb moment,” Nicholson says. “We take all our cues from our customers, and this was their favorite and it had been their favorite for a while. So they voted with their orders, and we liked the ingredients and the name and knew this was the pizza we needed to protect.”

Next, it is time to consider your cost-to-benefit ratio. For any business investment, understanding the costto- benefit ratio is essential. Trademark decisions are no different. But what many people don’t know, says Cynthia Lynch, the administrator for Trademark Policy and Procedure at the United States Patent and Trademark Office (USPTO), is that you can gain “common law” trademark protection without any cost at all.

“In the United States, you can gain trademark rights just by using your mark (the name you want to trademark),” she says. “You definitely get additional legal presumptions and benefits by having an official trademark registration, but it’s not the case that without that, you have nothing.”

You can even add the ™ mark to your unique menu items without registering them, says Karin Segall, a Manhattan lawyer who specializes in clearance and registration of domestic and international trademarks. She says for owners who aren’t worried about legal battles surrounding stolen names and are simply looking to officially “mark” a fun menu item or unique name, common law trademarks can be a great solution. But if you’re going to be investing a lot in advertising and branding based on an item, she recommends you go ahead and initiate the registration process because it can save you money in the end.

“Before you do anything with it, you need to clear the name,” she says, explaining the clearing process involves thorough searching to make sure no one else is using your desired trademark. Segall says individuals can do a search online via the USPTO’s Web site as well as more conventional Google searches. “Doing your own search is certainly a good starting point,” she says. “But its best to have a lawyer do it because there’s a certain art to these searches and just because you didn’t find something doesn’t mean it’s not there.”

If you decide to go ahead and register your trademark, Lynch says restaurant services usually fall into a single “class,” and cost about $325 for the mark. If you choose to use a lawyer, obviously you’ll also incur any legal fees associated with researching and applying for the trademark, as well.

One of the most common problems Lynch sees in trademark applications at the USPTO is very basic: choosing a name that you can’t trademark. “We have criteria for what we can and cannot register, and we are ordered not to register a term that is generic, like ‘breadsticks,’ for example,” she says. “The philosophy behind the law is that your competitors should be able to use whatever terms they need to use to describe their item.”

Nicholson, owner of Glass Nickel Pizza Company, says he thinks it makes the most sense for pizza shop owners to go ahead and hire a lawyer, however, to navigate the trademark process for you. “Find an attorney with reasonable fees to do the leg work for you,” he says. “After all, you have a pizza shop to run!”

Nicholson sees his trademark as more than legal protection: it’s advertising, as well. “You’d pay as much to advertise in a hotel guide book and not bat an eye at it,” he says. “And people remember it and notice the trademark. Our regular clientele tell us how excited they are that Fetalicious is trademarked because they really take pride in it, too. They were there when it began and helped it become what it is today.”

Militano agrees, noting just an “R” in a circle sets you and your items apart from the crowd. “We operate in a college town, and this is no exaggeration: there are 14 pizzerias within five blocks of each other here,” he says. “But because of Wheatzza, I’m not just the average ‘sling a pie for five bucks and give it to a college kid’ guy. I made a brand that is memorable and means something. And it’s legally mine.” ?

The Payoff of a Trademark

Lauren Teton, a product naming expert and consultant, offers these tips on choosing the perfect trademark for your favorite menu item:
? Try some rhyme time. There’s a reason we remember catchy jingles or even the Dr. Seuss books we read as children: rhyming and alliterative names stick in our brains better than run-of-the-mill titles or stories. “I have found names that rhyme are memorable and really have the ‘fun factor,’ which makes them easy and entertaining to say,” she explains.
? Keep it simple. Make sure your trademarked item’s name will be something your customers can easily understand. She cites the case of two Italian restaurants with diffi cultto- pronounce names: Sfuzzi and Scuisa. “You had to be a chi-chi insider to know how to pronounce them, and even if you knew how to say them, you’d have to be an insider to know how to spell them to call for a reservation,” she says, noting that these restaurants are no longer in business.
? Make it mean something. Teton loves the name of Gerlanda’s “Wheatzza” pizza. Not only does the name say exactly what the food is—a pizza with a whole-wheat crust—it is unusual while still being something our brains understand easily when we hear it. “If you can choose a name that implants itself in the brain, you will have an advantage over the competition,” she says.

Alyson McNutt English is an award-winning freelance writer specializing in home, health, family, and green topics. She lives in Huntsville, Alabama.