Lawsuit of the Day: What’s In a Name?
Well, if the name is “Wolfgang” and you’re in the restaurant business, maybe a lawsuit. Celebrity chef Wolfgang Puck, owner of the famous Spago restaurant in Beverly Hills, is taking legal action against a new neighbor.
From TMZ.com:
Wolfgang Puck is filing a lawsuit, claiming another Wolfgang has screwed him over….Puck claims a guy named Wolfgang Zwiener opened a rival restaurant, Wolfgang’s Steakhouse, just blocks from Spago in Bev Hills. According to the suit, one of the owner’s of Wolfgang Steakhouse had a license to use the Spago trademark, but that expired last year.
In L.A., Wolfgang Zwiener may be just “some guy.” But in New York, he’s an esteemed veteran of the legendary Peter Luger steakhouse (popular for summer associate outings), who has now embarked upon his own restaurant career.
Wolfgang Puck’s lawsuit, which seeks injunctive relief, claims trademark infringement and unfair competition. The TMZ.com editors seem unsympathetic:
A frustrated Puck says, “The most common reaction is, ‘It says Wolfgang’s Steakhouse and you are Wolfgang.” We’re thinking Mozart might have one up on him. Dude, you make pizzas.
Will the courts be more supportive? If Puck’s first name were more common — say, “John” or “Bill,” with the competitor calling itself “John’s Steakhouse” or “Bill’s Place” — then his claim might not satisfy the distinctiveness requirement of trademark law. But with a name as unusual as “Wolfgang” — not as unusual as Omarosa, to be sure, but certainly uncommon — maybe he has a better shot. “Wolfgang” is not in the top 1000 baby names in the United States (although it does crack the top 3000 in Belgium).
We’re not experts in this area, so we’ll stop rambling. Any IP lawyers care to weigh in?
Wolfgang to Wolfgang — Puck You [TMZ.com]
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FIRST!
But it's the other guy's actual name *too*. Doesn't sound good for Puck.
There's a whole lot more day left to come up with something more interesting than this...
I did initially think the restaurant was another "Puck" restaurant. It struck me as odd bc WP already has a steakhouse in BH, Cut. Most people who go to these sorts of places will figure it out pretty quickly that it's not a WP place.
This case is Dead on Arrival if it's just based on the name. The guy can't claim a trademark on his name - it's a dang normal name after all. The only thing he can go for is trade dress infringement - which would mean that more than just the name would have to make it look a lot like a Puck restaurant. Not sure if that's the case or not.
It doesn't matter if it's your "factual" name. If your real birth name is "Starbucks McDonald" you still can't create a coffeehouse named Starbucks or a Restaurant named McDonalds.
I'm not saying that Wolfgang is infringing, but the fact that he named the restaurant after himself is beside the point.
My very nice realtor has 40 acres of Pinot that she and her husband bottle (until now) as "Dry Stack Winery". Needless to say, after receiving correspondence from Dry Sack and consulting with counsel, they are changing the name.
Opening a restaurant 2 blocks away from Spago--Wolfgang Puck's flagship store in Beverly Hills, where I like to order the steak-frites, called "Wolfgang’s Steak House" would cause a reasonable person confusion.
Additionally, it sounds from the post that the name association was intentional, since the investors for the restaurant had originally licensed the name with Puck.
My sympathy is with the more famous—and Left Coast--Wolfgang.
TMZ (i.e., Harvey Levin) is just trying to promote free meals in the new resturant. by siding with the name theif.
6:57, i don't think the name association is intentional because Wolfgang has been operating his NY steak house under that name for years.
quick question for you though, according to your wine example. Wouldn't this case be different because the name of Pucks place is Spago and not Wolfgang?
What an idiot-- he should have named it "Kash".
Anybody in LA who has been to both Morton's and to Arnie Morton's Steakhouse (called Morton's Steakhouse in the rest of the country) knows the answer to this.
Wolfgang Zwieger gets to use his name, but will have to use his full name.
Wolfgang's Steakhouse is far superior to the pizza dudes crap.
Puck should be thrilled. To my friends in LA order the canadian bacon it is the best in the business.
- NY Summer Lunch!
Trademark infringement may be tough, but he might be able to make out a case under the broader unfair competition law. The expired Spago license and the location of the restaurant look a lot like bad faith.
It depends on a few things, 1) Whether his name "wolfgang puck" is trademarked, in which case he will only need to show a likelihood of confusion (considering that wolfgang's is right next to his restaurant, if a survey shows that people are legitimately confused, he has a pretty good case) 2) Even if "wolfgang puck" isn't trademarked, he may have a claim of dilution if he can prove that people are associating "wolfgang's" with "Spago"
3) as others have said, unfair competition is also on the table
As an IP lawyer, I can assure you Puck wins this one. All of you non IP lawyers dont know crap, so feel free to refrain from making non sensical comments that make you sound like a bunch of AU grads.
As a certified genius, I can assure you that Peter Luger is delicious and serves the best steaks, anywhere. Also, I am amazing!
-Ovary Bell
A proper name will be treated as a descriptive mark -- inherently fairly weak, but can gain strength through secondary meaning. My guess is that Wolfgang Puck will be able to demonstrate that he has achieved strong secondary meaning in LA with respect to restaurants, and so will have a pretty good case.
Am I missing something, isn't the trademark "Spago." I don't believe Mr. Puck even uses his first name in the name of his restaurants. If he had called his place "Wolfgang's Spago" or something like that, then I could see the confusion.
I also wonder whether Mr. Zwiener can change his place to "Wolfgang Zwiener's Steakhouse."
Mrs. 诶比西 say Lugie steakhouse number ones best in Asia and U.S. of A.
With Respect.
Mrs. 诶比西
9:10 yes, you are missing something; it's called a brain.
Will all of you non-IP lawyers quit making dumb comments? Please.
Bush compared Obama's proposal to engage in talks with Iran to trying to appease the Nazis. Why don't you go play with something shiny now, Mr. President? A**hole.
Mrs. 诶比西 = Mrs. Roger Lou, first wife deceased Roger Lou. (Shinyoung Ho second wifey)
Oriental is as Oriental does. Roger Lou reary pissed at Werfgang Puck. His restaurant so shitty.
You still have a common law right to use your own name in trade.
Yeah... Spike Lee tried suing "Spike TV" for using his name. That failed too.
For all the people claiming you can use your name so long as it really is your name...go play in traffic...and how are you enjoying law school?
Guys in my highschool infringed names of other guys in my high school all the time. It was no big deal.
Guys in my highschool infringed posts of other guys in my high school all the time. It was no big deal.
Frat stud sucks Eliot Spitzer at UVA. It was just law school and they were experimenting. It was no big deal.
Now I know why lawyers get a bad rap--because they weigh in on questions about which they don't know anything, and are invariably WRONG.
Wolfgang Puck's trademark is for "Wolfgang Puck Bar & Grill" for restaurant services. http://tess2.uspto.gov/bin/showfield?f=doc&state=tp4sed.2.33 Zweiner tried to get a trademark on "W Wolfgang's Steakhouse," but the Wolfgang Puck mark was cited against it. http://tess2.uspto.gov/bin/showfield?f=doc&state=tp4sed.2.7 Zweiner loses.
10:13 a.m. is probably right. I was wondering whether Wolfgang Puck used his name in commerce. He might also be able to argue dilution if he can prove his "mark" is famous.
Looks like Wolfgang Zweiner already got the message. He has at least three trademark applications at the PTO that have been published. All include his full name.
9:18, you are an IP genius. We all bow before you. All non-IP people are hereafter banished from posting by order of the IP God.
The point people are making is that Wolfgang is not the trademark in this case. While I believe he puts his name on products like pots and pans and other cooking related items, I don't think he puts his name on any of his restaurants. Each restaurant is different on the basis of its food/décor.
Also, Puck must show that his name "Wolfgang" has acquired secondary meaning. I don't think that a substantial portion of the consuming public would think that the new restaurant is the same as his. I think that "Wolfgang Puck" might have some secondary meaning, but not simply Wolfgang. If you look at all of his products and other things that his name is on, he uses the full name "Wolfgang Puck." I think he is gong to have a hard time establishing that Wolfgang alone is deserving of trademark protection, especially when the other guy's actual name is Wolfgang.
"one of the owner's of Wolfgang"?
I see TMZ remains true to its tradition of horrible writing.
Instead of making a closing argument, Wolfgang Z.'s lawyer is going to give every juror a medium rare porterhouse to eat, along with a side of hash browns and creamed spinach. Wofgang Z. wins.
Peter Luger's is ridiculously overrated. Wolfgang's on Park Ave has the best steak in NYC.
10:35 - Puck has numerous registered trademarks that include "Wolfgang."
Everyone else - Wolfgang Zweiner has pending registrations on "Wolfgang's Steakhouse by Wolfgang Zweiner." It will be hard for Puck to show confusion with Zweiner's last name in there. So Zweiner will do a big font for "Wolfgang"s Steakhouse" and a much smaller font and less prominent positioning for "by Wolfgang Zweiner."
Plus, looks from the comments here like Zweiner and "Wolfgang's Steakhouse" may themselves already have their own secondary meaning and a decent association.
Puck should get back in the kitchen, and should stop opening "cafes" (i.e., sandwich counters) in airports. Cheezy.
Dear 7:19am:
My understanding from shopping as Safeway over the years is that Wolfgang Puck is heavily promoted brand (for over a decade) and includes prepackaged food products, television shows, books, and other products and services.
And regarding the OTHER Wolfgang's steakhouse, I thought his other restaurant was called Peter Luger or something.
And 10:35, who are you to tell an entrepreneur that he should "get back in the kitchen" instead of making millions from franchise-endorsement deals.
Further, the proliferation of these "cheesy" offshoots just about everywhere the eye can see is conclusive proof of the strength and value of the Wolfgang Puck brand.
And there is a lot more to protecting that brand than the other Wolfgang poaching Spago.
I put my money on Wolfgang Puck to win this suit.
And Harvey Levin is a putz.
Will all of you non-IP lawyers quit making dumb comments? Please.
Will all of you non-IP lawyers quit making dumb comments? Please.
Will all of you non-IP lawyers quit making dumb comments? Please.
Will all of you non-IP lawyers quit making dumb comments? Please.
You must be silent!
The main question is likelihood of confusion. Even if Wolfgang Pucks's mark is different, the odds are pretty good that Wolfgang's Restaurant will confuse enough people that Puck will succeed at trial.
Heart,
IP Lawyer
Sorry to be such an IP nerd - but why did Puck's lawyers file in state court? The complaint includes counts for violation of the Lanham Act over which the state court has no jurisdiction. They should have filed in federal district court.
Sorry to be such an IP nerd - but why did Puck's lawyers file in state court? The complaint includes counts for violation of the Lanham Act over which the state court has no jurisdiction. They should have filed in federal district court.
This site seemed to have a decent summary of personal names in trademark law (not about this case):
http://www.ivanhoffman.com/personalnames.html
I am a former IP litigator, but unlike at least one prior poster I would not "guarantee" a particular result. Not least because not only would I not express an unqualified uninsured opinion on a comment board, but I especially wouldn't do so if I weren't being paid for it! [grin]
12:31 - Wolfgang's other restaurant is called....Wolfgang's Steakhouse. He's been running it for about 4 years now in Manhattan (one on Park Ave. and one in Tribeca). His lineage is Peter Lugar's (he was employed there for 40 odd years and worked his way up to head waiter), but it's not like he hasn't already has a restaurant of that name.
I don't know squat about IP law, but this just seems whiny to me. WZ has been operating his restaurant with that name for years. "Wolfgang Puck" is a brand, not "Wolfgang". Wolfgang is a real name, which happens to be the proprietor's real name. Still, adding the full name at the back seems like an amicable enough way to settle the whole ordeal. I'm sure the publicity the Steakhouse will get over this is worth more than the cost to change the signs.
This site seemed to have a decent summary of personal names in trademark law (not about this case):
http://www.ivanhoffman.com/personalnames.html
I am a former IP litigator, but unlike at least one prior poster I would not "guarantee" a particular result. Not least because not only would I not express an unqualified uninsured opinion on a comment board, but I especially wouldn't do so if I weren't being paid for it! [grin]
I am not a big Peter Luger's fan either. However, some of my friends swear by it. Either way, I think this guy is going to lose. He doesn't have enough money to battle the Puck empire in any event.
hey, Lat - for this and other similarly interesting cases, why don't you post the names of the law firms and attorneys filing and defending suit? wouldn't that be about right for a gossip blog, and maybe useful for those of us who like to know which firms handle what kinds of matters?
hey, Lat - for this and other similarly interesting cases, why don't you post the names of the law firms and attorneys filing and defending suit? wouldn't that be about right for a gossip blog, and maybe useful for those of us who like to know which firms handle what kinds of matters?
I'm not an IP litigator, but I play one on TV. Actually, a ittle better -- I took Jim Treece's IP class as a 3L at Texas. These cases are all very fact specific, and unpredictable. Pontiac (the car) sued Pontiac Boat Company -- and lost; it couldn't overcome the fact that the boat company was located in Pontiac Michigan. Mead Data sued Toyota over Lexis/Lexus, but the court found confusion by customers unlikely and dilution practically frivolous, given the quality of the automobiles.
I think this case is harder for the defendant because he has a regional, rather than a national, reputation. But I personally associate Wolfgang Zweiner with Luger's even though I live in Austin rather than NYC. I also think he'll have a hell of a time proving intent to infringe.
(P.S. "After submitting a comment it may take several minutes to appear."?? ATL, I've called the dangling modifier police.)
Dear 4:21,
Congratulations. You are a moron.
Regards,
Prof. Treece
p.s. If i did not flunk you I will be amending your grade promptly.