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Miller’s Ale House: How Not to Name Your Restaurant

Miller’s Ale House: How Not to Name Your Restaurant

It’s always astonishing to me that businesses will invest countless dollars in every aspect of their operations while relying on a name that will only bring legal issues. Case in point: Miller’s Ale House, Inc. v. Boynton Carolina Ale House.

Miller’s operates about 50 restaurants, each of which has a different name. All of the names follow the same construction: the name of a geographic location followed by “Ale House.” Their Boynton Beach location is named “Boynton Ale House.”

I don’t need any more information than that to tell you that this is a lousy way to name your restaurants. In almost all cases, geographic indicators can’t be used as a unique trademark – meaning, all of your competitors can use the same word to indicate to their customers where they are located. And “Ale House” is clearly a generic term for a type of restaurant. Combining two elements that can’t be protected under trademark law does not create a viable trademark.

The defendant, Boynton, opened a restaurant named “Boynton Carolina Ale House” in the same city, Boynton Beach, Florida, where Miller’s “Boynton Ale House” restaurant was already operating. Miller sued, despite the fact that in a previous lawsuit, in 2000, they had been unable to establish that “Ale House” was anything but a generic term.

The key point to focus on is the generic nature of the term “Ale House.” The court in Miller v. Boynton correctly noted that “[i]n general, a generic term cannot be appropriated from the public domain and thus cannot receive trademark protection.”

The court in the 2000 case found the term “Ale House to be “generic words for a facility that serves beer and ale, with or without food, just as are other similar terms such as ‘bar,’ ‘lounge,’ ‘pub,’ ‘saloon,’ or ‘tavern.’”

The court in the recent case laid out a clear rationale why they were hesitant to revisit the issue of whether “Ale House” had evolved from a generic term into one that could be protected by the plaintiff as a trademark:

There is ample reason for a court to resist revisiting a determination of a term’s generic quality. …[W]here a term is generic, “any claim to an exclusive right must be denied since this in effect would confer a monopoly not only of the mark but of the product by rendering a competitor unable effectively to name what it was endeavoring to sell.”…To allow a party to revisit an adverse determination of genericism based on incremental changes to the facts before the court (for example, an expanded marketing strategy) would be to give it a greater than warranted opportunity to monopolize a class of products.

Nonetheless, they addressed the issue and found Miller’s position wanting. Despite the fact that this litigation went on for several years and doubtless involved a mountain of legal fees, Miller’s presented only two statements from customers to support their claim that the term “Ale House” was associated exclusively with their restaurants in the eyes of consumers. The court found these statements insufficient to overturn the finding of genericness. Miller’s also submitted statements by employees to the effect that customers tended to confuse the two restaurants. This was a useless claim that had no bearing on the question of whether “Ale House” is a generic term. Finally, Miller’s presented evidence that it had expanded its advertising and physical presence since the 2000 case. Again, that argument failed – in essence, a business can’t use advertising alone to convert a generic term into a distinctive one.

If Miller’s had simply chosen a name that would meet the basic standards of trademark protection, they wouldn’t have had to waste all that time and money on litigation – litigation that didn’t even produce the result they wanted. The story of Miller’s Ale House is a cautionary tale: businesses would be wise to avoid relying on generic and geographic terms when they are coming up with names.

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