Regina Pizza & Capone’s Pizzeria: Artwork as Trademark

A trademark can be anything that serves as a “source identifier,” that is, a device that makes an association in the consumer’s mind between certain goods or services and the source of those goods or services. When a shopper sees a box marked with the word, “CHEERIOS®,” it’s taken for granted that the box will contain O-shaped cereal of a known taste and
quality made by General Mills. Likewise, when customers see the golden arches outside a fast food restaurant, they assume that they can walk inside and order a Big Mac®, and that burger will taste the same no matter where the restaurant is located. But words and logos aren’t the only source identifiers; sounds, colors, smells – and artwork – can all serve as trademarks for goods (or service marks for services). Artwork can be protected from unauthorized reproduction through copyright law, but when someone uses another’s artwork to create a false association regarding the source of goods or services, trademark law can protect the owner of the “artwork mark.”

Regina Pizzeria has been serving pizza lovers since its first restaurant opened in Boston’s North End in 1926. Expanding to other locations throughout Massachusetts and New Hampshire, Regina Pizzeria began to be more and more associated with the red T-shaped sign that originally hung in front of the North End restaurant. A painting of the North End street scene around the pizzeria displaying the sign has also been used in Regina Pizzeria marketing materials. As such, that artwork depicting the restaurant and its unique signage has served as a service mark.

Picture

But in 2009, another local pizzeria decided to capitalize on the good will Regina had established in its artwork mark. Capone’s Pizzeria and Prohibition Pub, with restaurants in nearby Pembroke and Weymouth, Massachusetts, began using artwork on their advertising and take-out menus that is alleged to be confusingly similar to the artwork that Regina used by merely replacing the word “Regina” with the word “Capone’s” on the sign in the picture. On the left is the Regina artwork; on the right is the artwork used by Capone’s:

Regina sent a cease and desist letter to Capone’s on December 7, 2009, and when Capone’s refused to comply, on February 9, 2010, Boston Restaurant Associates, Inc. (the corporate owner of Regina Pizzeria) filed suit against Gambino’s Restaurant, Inc. (the corporate owner of Capone’s) in federal court for infringement of the T-sign and artwork service marks (under both federal statutes and Massachusetts common law) and for unfair and deceptive trade practices (under Massachusetts statute).

From the moment a businessman hangs a sign outside of his establishment or uses other service marks in advertising or trademarks on the goods he sells, the public begins creating an association between the marks and the quality of the goods and services offered inside. Because it can take years to build up a good reputation, that association needs to be protected from others who would misappropriate it for their own benefit.


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