Florida IP Trends

Last week I wrote about Florida’s love of boats.  This week, it’s hooters Hooters.  I’m sure it’s the same all over the U.S.A., but Hooters (the restaurants) are all over Florida.  Just last week I went to Daytona for a car show, and Hooters was there selling wings, soda, and fun.  Before I had even handed over my two dollars for a warm can of Diet Coke, an “I Love Hooters” sticker had been slapped on my chest.  It reminded me of my favorite South Park episode in which Butters falls in love with his “RAISINS” waitress because she showers him with affection at the restaurant – at least until he ran out of tip money…

Florida is also the place where WingHouse spanked Hooters in a trade dress infringement case, so a Hooters post is definitely at home on Florida IP Trends.

As an IP attorney, I have a disease that has altered my brain into constantly scanning for trademarks – infringing or otherwise.  While most people scan signs and billboards for information (such as STOP, YIELD, etc.), I’m looking for the registered trademark symbol.  It’s ridiculous.  If I see a somewhat-descriptive mark with the “circle R” symbol, I’ll turn to my wife and say “Must be on the Supplemental” to which she replies, “You’re a dork.”  Point taken, but 9 times out of ten when I get back home and search the USPTO TESS database, I’m right.

So, imagine my udder utter delight when I saw this sign: LATIN HOOTERS.  Oh yes – there is a LATIN HOOTERS restaurant on Lake Underhill Drive in Orlando.  When I first saw it I got giddy with the possibility of a Hooters v. Latin Hooters fight.  I have seen at least one (old) cease and desist letter sent by Hooters asking for the removal of a picture of a customer with some Hooters waitresses from a website.  Surely LATIN HOOTERS is on the radar.

Well, this was all several months ago – in fact – it may have been a year since I took these pictures with my cell phone.  I didn’t think much of it until today when I saw the sign again.  So, I fired up the TESS database, and sure enough, LATIN HOOTERS filed a trademark application.  Ouch.  This is a surefire way to bring the wrath of the owner of a famous brand.  It’s like mailing a letter to corporate counsel asking for them to check out your potentially infringing business.  Most people don’t realize that companies with a valuable IP portfolio are actively monitoring trademark applications for potentially infringing marks.  They have to – there can be legal penalties for failing to police or monitor your registered mark.  Example:  Ever thought about filing an application for a mark that contains the word “Monster?”  Good Luck.

The word mark application is for “LatinHooter’s” (with an apostrophe), for “bar and restaurant services.”  The application was filed on 5/10/2008, and an Office Action was mailed out 8/26/2008.  No response has been made, but the (pro se) Applicant has until 4/26/2009 to respond.  Predictably, the Office Action is a refusal to register “LatinHooter’s” based on a likelihood of confusion with one of many HOOTERS registrations, including this one for “restaurant and cocktail lounge services.”

My guess is that the application will either be abandoned or ultimately fail to mature into a registration.  If the owner can somehow get around the Office Action and get the application published, I bet a WingHouse dinner that an opposition proceeding will be close behind.

So, aside from the PTO issues, if LATIN HOOTERS continues to use the business name, what might happen?  Obviously, trademark infringement is a viable claim.  As the Examining Attorney wrote in the Office Action:

HOOTERS is a well known mark for restaurants and bars. LATINHOOTERS[sic] looks like a natural expansion of the HOOTERS chain into the Latin market. Consumers would likely think the services are from the same party or related entities.

However, I’m more interested in a dilution claim.  The Trademark Dilution Revision Act clarified the standard for determining whether a mark is “famous” for purposes of dilution, and the Act also clarified that the dilution standard is a likelihood of dilution and not actual dilution.  My initial reaction is that Hooters would be able to prove fame and a likelihood of dilution – by blurring and possibly tarnishment.  I’ll continue to watch the “LatinHooter’s” trademark application and also keep an eye out for any court filings.  If something comes up, I’ll further explore the claims and write another entry.

Until then, whether you like “regular” Hooters or Latin Hooters,  there’s a place for you in sunny Orlando.