Two restaurant chains with similar names are about to square off in a trademark-infringement showdown
Earlier this year, a large sign appeared in Beverly Hills that read: "Coming Spring 2008 Wolfgang's Steakhouse." For most of the denizens of the gilded Los Angeles neighborhood, the name Wolfgang—especially when connected to a restaurant—means just one thing: Wolfgang Puck, the award-winning, Austrian-born chef who parlayed his culinary talents into a global brand, while launching a universe of restaurants (including Spago, Chinois, Postrio) that have become regular hunting grounds for celebrity-stalking paparazzi.
And so when the new restaurant appeared in April, located just a few blocks from Puck's steakhouse, Cut, that had opened two years earlier, not a few assumed that Wolfgang Puck was the chef behind Wolfgang's Steakhouse. But he wasn't. There was another Wolfgang in town: Wolfgang Zwiener.
It wasn't long before Puck and his associates were besieged by questions from the chef's cadre of longtime and well-heeled customers. According to Puck, who caters the annual Governor's Ball following the Oscar ceremony, there was a lot of confusion. Many approached him personally, including movie producer Frank Mancuso and actor Andy Garcia. "They said to me: 'Uh, why do we need another steakhouse in Beverly Hills?'" Puck says. Cue the intellectual property lawyers. Soon a legal battle was brewing.
Defending Your Turf
While the example of the two rival Beverly Hills steakhouses has elements of the dramatic, it is not unusual. Every year, scores of businesses find themselves on the receiving end of trademark infringement lawsuits. In general, the problem arises when a company establishes or uses a name, logo, or design that is identical or strikingly similar to an already legally established mark that confuses or misleads the public about the origin of a good or service. In fact, trademark owners are required to assert infringement claims or they can run the risk of being considered by law to have abandoned their marks.
As it turned out, just below the new steakhouse's signage were the words, in smaller lettering, "by Wolfgang Zwiener." A 40-year veteran and former headwaiter of acclaimed New York steakhouse Peter Luger's, Zwiener was in the midst of expanding his own brand of restaurants after successfully launching his first Wolfgang's Steakhouse in Manhattan in 2004 on Park Avenue, followed by a second location in TriBeCa.
And that, according to Puck, is where the initial problem between the Wolfgangs began. When Zwiener opened his New York eatery, Puck says many of his customers thought he had opened a restaurant in Manhattan. "I had so many people come and tell me that they didn't see me in my New York restaurant, and I told them it was not my restaurant," he says. Despite the frequent misunderstanding, Puck says, "I said I'd be a nice guy and not fight him. He was a waiter his whole life, and it wasn't in our backyard, even though it created confusion."
Instead, in March, 2007, Puck and Zwiener negotiated an agreement intended to "eliminate confusion." As part of the deal, Zwiener agreed to display his name prominently alongside any future restaurant, franchise, or licensee that he might open outside of Manhattan (including advertising), while Puck agreed to do the same should he establish future eateries, licensees, or franchisees in Manhattan.
A Rival Right on the Doorstep
With both parties satisfied, all seemed fine until Zwiener landed in Beverly Hills, Wolfgang Puck country. "Now they opened down here a block away from us," says Puck. "It's not like they opened in Bakersfield. Everybody knows me here as Wolfgang. His name is so small, it's like they are hiding it."
Puck's staffers claim they've received hundreds of calls from confused customers. One patron attempted to book her Christmas party at Wolfgang's Steakhouse, then withdrew her reservation after discovering that it was not a Puck restaurant. Even the celebrity press has conflated the two Wolfgangs. "It's all confusing to people. They get upset with me," says Puck. "So I said we'd have to do something."
After Puck called Zwiener to complain, referring to their agreement, the chef maintains nothing was done to remedy the situation, so he called his lawyer. On May 15, Puck filed a trademark-infringement lawsuit against Zwiener, claiming that he was "brazenly seeking to take unfair advantage of the reputation and enormous goodwill developed over the past 32 years by Wolfgang Puck and the Wolfgang Puck brand."
Puck is not alone. A number of companies are known for vigilantly protecting their trademarks, regularly going after those they believe are attempting to take advantage of the reputation and goodwill they have built up over time. For one, Seattle's Starbucks (SBUX) frequently polices its trademarked logo of a split-finned mermaid in a circle. Recently, the coffee chain sued coffee shops in China, Japan, and South Korea, claiming they had infringed on its intellectual property. Eight years ago, the company successfully sued a comic artist who sold T-shirts, stickers, and coffee mugs parodying the Starbucks logo depicting the siren crowned with a dollar bill, exposing her chest and the words "Consumer Whore."
Two Names Too Similar
In 2004, Aventis (which later became part of French pharmaceutical giant Sanofi-Aventis (SNY)) successfully sued the much smaller Advancis Pharmaceutical for trademark infringement after claiming that the Germantown (Md.) company used the similar name to unfair advantage, forcing Advancis to change its name, signage, letterhead, and Internet site. Last June the company officially became MiddleBrook Pharmaceuticals (MBRK).
According to trademark and intellectual-property attorney Ryan Gile, of Las Vegas law firm Weide & Miller, who also blogs about the topic on his site Las Vegas Trademark Attorney, many small businesses simply don't go to the trouble of researching trademarks when they come up with a name for their own company and find themselves in trouble later. But simply owning a mark doesn't mean a business can't be sued. (About two-thirds of small companies polled in a 2006 survey by the National Federation of Independent Business do own their own trademark.)
According to Gile, when a small business is hit with a trademark-infringement lawsuit from a bigger company, many will change their name immediately. "Most small businesses don't have the resources to fight," he says. "That is all the more reason for them to do a search for conflict names to begin with." He adds another big mistake that can land business owners in legal trouble is choosing a company name that is only slightly different from an existing trademark.
At the same time, Gile acknowledges there is also a widespread practice of some businesses attempting to take advantage of the reputation of an existing brand, coming up with variations on existing trademarks. For instance, he cited the example of a Huntington Beach (Calif.) company called PerfumeBay that was sued by giant online retailer eBay (EBAY) claiming that the online perfume retailer was causing confusion and deceiving people into thinking that the outfit was somehow affiliated with eBay. After initially losing the suit, eBay won an appeal by the Ninth Circuit Court last November.
Does Small Print Fill the Bill?
For their part, the Zwieners dispute any wrongdoing. In fact, they say that they have adhered to the aforementioned agreement signed last March. "We are 100% abiding by the agreement," insists Peter Zwiener, Wolfgang's son and the president of the restaurant's operating company. "We are allowed to use the name Wolfgang's Steakhouse by Wolfgang Zwiener. We are not trying to create confusion. We have two successful restaurants in Manhattan, and we are known nationwide and globally because of my father and how he worked in the steakhouse businesses for over 50 years. He is older than Puck and is known, and our lawyers say that the lawsuit is completely frivolous and has no merit."
It's no surprise that the Puck camp vehemently disagrees. "'Wolfgang's Steakhouse' shouts," says Puck's attorney Philip Heller, while the small wording, "'By Wolfgang Zwiener' whispers." According to Heller, despite Zwiener's name printed in accordance with the agreement, they are still obliged to rectify the situation. "Even if they are in technical compliance, there is confusion on the part of the public, despite everyone's best intentions. And in this case there is lots of confusion."
As it stands, a judge will decide the case of Wolfgang vs. Wolfgang. The two chefs are set to face off in federal court on June 11. For Puck, it is already a clear-cut decision: "If I made a record and called myself Elvis, it would be misleading the customers."
Flip through this slide show for a look at some David-and-Goliath trademark infringement claims.