Bar Dough, a restaurant in Denver, CO, is known for its Italian food, celebrity chef Carrie Baird, and fancy toast.  The restaurant opened in 2015 and has since satisfied the pizza and pasta cravings of multiple hungry diners and food reviewers.  Almost 2,000 miles away in New York City, another restaurant named BarDough opened its doors around the end of 2019, offering pizzas and cocktails.  Before the opening, the restaurant’s owner, 350 W 46 Café (“350”), filed a federal trademark application on February 21, 2019 based on intent to use BARDOUGH for bar and restaurant services, which issued to registration on March 17, 2020.

On November 5, 2019, Culinary Creative, the owner of the Denver restaurant, filed a federal trademark application based on use of BAR DOUGH for restaurant services.  Upon examination, the U.S. Patent and Trademark Office cited 350’s then-application for BARDOUGH as a potential basis for registration refusal.  To overcome this citation, Culinary Creative provided evidence of prior use of the BAR DOUGH mark in connection with its restaurant services.  However, the Examining Attorney correctly refused to consider that evidence on the basis that he had no authority to so during ex parte prosecution.  At that point, 350’s BARDOUGH mark registered, which prompted the Examining Attorney to refuse registration of Culinary Creative’s mark.

In response to the above, on January 27, 2021, Culinary Creative filed a complaint with the U.S. District Court for the Southern District of New York for trademark infringement, unfair competition, and cancellation of 350’s registration for BARDOUGH.  The complaint sought a permanent injunction against 350’s use of BARDOUGH, as well as monetary damages. Creative Culinary asserted that its BAR DOUGH mark “acquired international notoriety when [its] executive chef, Carrie Baird, starred in . . . Top Chef,” and suggested that, by adopting the BARDOUGH mark, 350 intended to benefit from the goodwill associated with Culinary Creative’s mark.  350 now has thirty days to respond, following service of the complaint.

As of now, we do not know where this dispute will take Culinary Creative and 350.  However, assuming the New York restaurant innocently adopted its name, it provides an important reminder of the benefit of conducting a thorough trademark clearance search prior to adopting a new mark.  Notably, even a search of the USPTO’s database would not have disclosed Culinary Creative’s prior rights, since its application was not filed until after 350’s.  However, a deeper search would surely have referenced Culinary Creative’s use, and allowed 350 to move to another mark before investing in BARDOUGH.  The case also shows the benefit of filing applications sooner than later, as in this situation, if Culinary Creative had filed its application at the time it adopted the mark, registration of 350’s mark surely would have been refused by the USPTO.