Restaurant Battle Over “Butter” Churns to an End

April 13, 2010

San Francisco, CA - The restaurant war over federal registration of the name "Butter" ends with San Francisco restaurant "Butter" prevailing over a competing rival restaurant in New York City.

Pure Entertainment LLC recently won a ruling from the Trademark Trial and Appeal Board on a motion for summary judgment canceling the federal registration for the mark "Butter Restaurant" and denying a federal registration for the mark "Butter Lounge." Pure Entertainment LLC is a California company that owns and operates a well-known restaurant, bar and nightclub in San Francisco named "Butter" that has used the service mark "Butter" since 1999. Varrick Group LLC, an affiliate of Butter Licensing LLC, is a New York company that owns and operates a restaurant, bar and nightclub established in 2002 in New York City also known as "Butter."

Pure Entertainment objected to the use of the service mark "Butter" by Varrick Group prior to the opening of the New York establishment and after the competitor attempted to register the marks "Butter Restaurant" and "Butter Lounge." Pure Entertainment initiated opposition and cancellation proceedings against the competing marks with the Trademark Trial and Appeal Board on grounds of likelihood of confusion and fraud, among others. After the consolidation of the opposition and cancellation proceedings, Pure Entertainment filed a motion for summary judgment in the consolidated proceeding. The Trademark Trial and Appeal Board granted Pure Entertainment's motion for summary judgment on the grounds of likelihood of confusion. Under the Board's decision, Butter Licensing's application to register the mark "Butter Lounge" was refused, and its registration of the mark Butter Restaurant was cancelled.

Phelps Dunbar LLP attorneys Debra Brown, Jerome Hafter and Anne Turner from the firm's Jackson, Mississippi, office handled the case for Pure Entertainment.

"We have long felt that the New York establishment got the idea to name their club ‘Butter' from us," said Mark Ligman, one of the owners of Pure Entertainment. "We were pretty well-known by the time they started developing their club. We feel the Board's decision was justified, and we are very happy with the decision. A tremendous amount of work was poured into developing and publicizing our brand, and we felt that, as the originators of the "Butter" mark in this industry, it needed to be protected and preserved."

Phelps Dunbar is a regional law firm of approximately 250 attorneys, with offices in New Orleans and Baton Rouge, Louisiana; Jackson, Tupelo, and Gulfport, Mississippi; Houston, Texas; Tampa, Florida; and London, England.

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