Sushi restaurant claims trademark right to call itself the “Original hand roll bar”. NOZAWA v. HRB

To state a claim for trademark infringement a plaintiff must allege that: (1) Plaintiff has a protectable right in the asserted trademarks; and (2) Defendant’s use of the mark is likely to cause consumer confusion.

A plaintiff can allege that its mark is protectable in several ways. First, it can allege that the mark is registered in the USPTO’s Principal Register. Registration of a mark in the Principal Register is prima facie evidence of the validity of the registered marks, of the ownership of a trademark, and of the owner’s exclusive right to use the registered trademark in commerce on or in connection with the products specified in the registration.

A mark registered in the Supplemental Register is not entitled to this presumption of validity. A mark in the Supplemental Register is only capable of becoming a trademark, but it has not met all the requirements to be placed on the Principal Register. When a mark is not registered with the USPTO the burden is on the Plaintiff to establish that it is entitled to protection under § 43(a) of the Lanham Act. Where a mark is registered in the Supplemental Register or is unregistered, a Plaintiff may state a claim for trademark infringement by showing that the mark is protectable based on the degree of its distinctiveness. The level of trademark protection available generally corresponds to the distinctiveness of the mark.

Marks are classified into five categories of increasing distinctiveness: (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, and (5) fanciful. A generic term is one that is commonly used and does not identify any particular source and, therefore, is not entitled to any trademark protection.

A descriptive mark “describes the ingredients, qualities, or characteristics of a product. A descriptive mark is generally not protected as a trademark because a merely descriptive mark is a poor means of distinguishing one source of products from another. A descriptive mark may qualify for trademark protection if it acquires secondary meaning. Secondary meaning is “a mental association in buyers’ minds between a mark and a single source of the product.” It exists when a mark “has been used so long and so exclusively by one company in association with its products that the word or phrase has come to mean that those goods or services are the company’s trademark.” Secondary meaning can be established through “direct consumer testimony, consumer surveys, length and manner of use, amount and manner of advertising, volume of sales, place in the market, and evidence of intentional copying.” Finally, suggestive, arbitrary, or fanciful marks are “automatically entitled to trademark protection because they are inherently distinctive.”

SUSHI NOZAWA, LLC, v. THE HRB EXPERIENCE, LLC, 2:19-cv-07653 (C.D.CA 2019) illustrates a case which will turn on whether a trademark on the Supplemental Register has acquired a secondary meaning.

Plaintiff is a limited liability company, named for it’s Chef Owner Nozawa, that operates several Sushi restaurants in the Los Angles area. Sushi Nozawa creates a memorable experience centered around Chef Nozawa’s specially crafted sushi hand rolls. Plaintiff’s success has lead to several copycat competitors that offer sushi hand rolls. Plaintiff owns several trademarks, including the following in the supplemental register: (1) “THE ORIGINAL HAND ROLL BAR”, and (2) “THE ORIGINAL HAND ROLL BAR FOUNDED 2014 LOS ANGELES”.

Defendant operates two Los Angeles restaurants which specialize in sushi hand rolls. Defendant advertises a “hand roll bar” experience similar to that of Plaintiff’s restaurant. Defendant filed a trademark application for the mark “HRB”, but failed to disclose to the USPTO that “HRB” was an acronym for “hand roll bar.” In September 2019 Plaintiff filed suit against Defendant for several different causes of action including trademark infringement.

Defendant moved to dismiss Plaintiff’s trademark infringement claims, on the grants that Defendant’s alleged use of any protected mark creates no likelihood of confusion, or alternatively, qualifies as fair use. In its opinion the court noted that both arguments required factual findings and because discovery had not been performed, facts to apply the law to, had not been presented to the court. The Court held that Plaintiff had adequetly pleaded a case and that a motion to dismiss was not available at this stage of litigation.

It is puzzling that Defendant only argued that consumer confusion did not occur and did not question whether Plaintiff’s trademark is protectable. Plaintiff’s trademark is on the supplemental register, there is a question whether the mark has acquired secondary meaning. Perhaps Defendant will raise that issue later in the trial.

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