NATOLI-LEGAL, LLC
As I was driving through my hometown recently I noticed a new pizza place that opened and its name caught my attention: Goodfellas. That’s right, just like the movie. To thicken the plot a bit further, they employed a logo that was actually taken from The Godfather series of movies namely the iconic image of the hand controlling the puppet strings that drop down and affix to the lettering only in the case of the pizza place the lettering read “Goodfellas” instead of “The Godfather.” I thought that this might be an interesting example to use to frame a quick overview of trademark infringement.
Trademark law is intended to protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce. The term “trademark” is usually reserved for goods and “servicemark” is reserved for services, but for filing purposes they are treated the same. The legal resource website, NOLO, defines trademark infringement as the following: “Trademark infringement is the unauthorized use of a trademark or service mark (or a substantially similar mark) on competing or related goods and services. The success of a lawsuit to stop the infringement turns on whether the defendant’s use causes a likelihood of confusion in the average consumer.”
The last part of this definition reveals the crux of any infringement matter, namely, whether your use of any given trademark is likely to cause market confusion with respect to the source of a good or service. In many cases, this will be obvious. For example, if I name my new tech start-up “Boogle.” The fact that I changed one letter would not get me around a trademark infringement issue with the now world famous Google trademark. If, however, I was in the plumbing supply business, “Boogle Plumbing Supply” should not pose the same kind of trademark infringement problem. That is, no market confusion is likely in this case because the goods and services are so unrelated. But what about our example above?
Here, we need to first consider the literal text element in the logo: Goodfellas. To be clear, the fact that they named their pizza restaurant after the movie all on its own does not mean that any infringement has occurred. First, and this is a good point to remember, the titles to single creative works like books, songs or movies are not protected by trademark unless they are part of a series. This is why there are 1001 songs titled “My Baby.” But an enterprise like say the Harry Potter movies is protectable because it is a series of work and not just one creative piece. So the name “Goodfellas” may be used for a pizza restaurant and just because it was the title of a movie does not mean that it could not be used. Let us say for example that the movie Goodfellas was in fact a series and the name was in fact a registered trademark. Even in this case, it might not preclude use of the name as a restaurant because movies (entertainment) are not the same as restaurants and food services. Consider that both Delta Airlines and Delta faucets co-exist without a trademark infringement issue even though they share the exact same name. Of course, if the restaurant was dressing up their facility in an effort to present a false association with the movie enterprise then this could be a problem largely as a trade dress issue (click on the link provided to learn about trade dress). Now just because the name Goodfellas may be used as a restaurant name does not mean that it has been cleared for such use. The first part of the trademark process is always conducting comprehensive due diligence and if you are not familiar with what is involved with that I suggest you read our article on that linked here. A simple search of the United States Patent and Trademark Office (USPTO) does show other Goodfellas registrations that could be a problem for our new pizza place. But what about the logo/design elements?
Our new pizza place may have some issues here as well. The logo, as I described above, was taken verbatim from The Godfather series of movies. Remember, a series of creative works can protect its title or in this case its logo through trademark. So just because the restaurant has replaced the standard character text element “The Godfather” with “Goodfellas” does not mean that the rest of the logo does not cause any false association or in other words market confusion. Presumably, Paramount Studios (or whomever may own the rights presently) does have a legal argument under trademark law here if they were so inclined to stop the restaurant from using their logo/design. And even if the trademark infringement argument was weak, we still cannot forget the copyright infringement aspects because after all a logo/design trademark has creative expression that is also protected by copyright law. And if they can show that our pizza restaurant’s logo is substantially similar to the movie’s logo, then they can make the case for copyright infringement without even needing to delve into the trademark issues.
Bottom line, get some solid legal advice before you start making an investment because the issues surrounding trademark and intellectual property law in general can get very complicated very quickly.