Nashville’s Calypso Cafe Serves Up Trademark Lessons To Start-Up Companies

One of my favorite fast casual restaurants in Nashville – Calypso Cafe – recently moved from its original location near Vanderbilt University to a larger space a few miles away. It was a victim of its own success. The original location was small and aging. Plus, parking was a problem. The new location will remedy these problems.

I was introduced to Calypso Cafe (or simply "Calypso") by my college girlfriend (now wife) who subsisted on a steady diet of Calypso's rotisserie chicken and fruit tea while she was at Vanderbilt. We continued to be regulars after college, and we passed on our affinity for the restaurant to our son. As you can see, he gets very excited about his meals there:

So what does this have to do with trademarks? Several years ago, Calypso Cafe began to offer franchising opportunities. As part of this process, it sought out federal trademark protection. Before filing a trademark application, however, the restaurant made a subtle change to its name. Perhaps anticipating that "Calypso Cafe" might not be registrable, the restaurant added the word "Couva" to its name. The restaurant subsequently filed a trademark application for COUVA CALYPSO CAFE. After considerable back and forth with the USPTO regarding the registrability of this trademark (which included the ultimate disclaimer of trademark protection for the words "Calypso Cafe"), a registration ultimately issued in 2006.

Here is a copy of the first page of the 2006 menu that the restaurant submitted as an example of a trademark use:

Calypso's experience holds important trademark lessons for new businesses. To avoid problems down the road, you should consider the following two factors before choosing the mark: (1) whether the mark you want is registrable; and (2) how difficult it will be to protect your mark based on the strength of the mark selected.

The most common reason for the USPTO to refuse registration is a "likelihood of confusion" between the applicant's mark and a pre-existing mark owned by another party. Another common reason to refuse registration is because the proposed mark merely describes the applicant's goods or...