How To Avoid A Trademark “Party Fowl”

Nashville is famous for being the home of country music, but it’s developing quite a reputation as a culinary hot spot. This has helped raise the profile of one of Nashville’s signature dishes: hot chicken.

The origins of hot chicken can be traced to Prince’s Hot Chicken Shack. Thornton Price was rumored to be quite the ladies man. After a particularly late night out, Prince’s girlfriend cooked him a fried chicken breakfast with extra pepper as revenge. Prince liked it so much that he created his own recipe and opened the restaurant bearing his name in the 1930’s.

Hot chicken is now featured prominently around Nashville. Besides Prince’s, popular hot chicken restaurants include Hattie B’s and Party Fowl. Earlier this week, I welcomed a trademark lawyer from New Zealand to town and introduced him to hot chicken at Party Fowl.

So what does this have to do with trademarks? Last year, Party Fowl filed applications to register PARTY FOWL in connection with clothing, glassware, coozies, cups and mugs, and restaurant services. Registrations for clothing, glassware, coozies and cups and mugs issued last month. The application for restaurant services, however, was rejected due to a likelihood of confusion with the previously registered trademark for PARTY FOWL WING SAUCE.

The United States Patent and Trademark Office (USPTO) examines every application for federal registration of a trademark for compliance with federal law and the Trademark Rules of Practice. One of the most common reasons for refusing registration is that a “likelihood of confusion” exists between the mark in the application and a previously registered mark or a pending application with an earlier filing date owned by another party.

A likelihood of confusion determination involves a two-part analysis. The marks are first compared for similarities in their appearance, sound, connotation and commercial impression. The goods and/or services are then compared to determine whether they are similar or commercially related or travel in the same trade channels.

With respect to the first part of the analysis, the USPTO concluded that the marks were similar in sound, appearance and meaning because the dominant part of each party’s mark is the words “party fowl.” With respect to the second part of the analysis, the USPTO noted that the applicant’s services are “restaurants” and the registrant’s goods are “chicken wing sauce.” This led the USPTO to conclude that the goods and services are related because “restaurants” may offer “chicken wing sauces.” The USPTO added that the conditions surrounding the marketing of the goods may be such that they could be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the services and goods come from a common source. Because of the similarities between the marks and the services and goods of the parties, the USPTO determined that a likelihood of confusion is created.

The takeaway for new businesses is to avoid choosing trademarks that are likely to be confused with already registered trademarks. Trademark searching is a critical first step in this process. Working with a trademark lawyer (like us) also helps considerably.