A family-owned Maine restaurant is demanding a trial of a claim by a nightclub operator that its use of the word “Tao” is trademark infringement.
In a November 1 answer filed by Tao Restaurant LLC to a complaint that Tao Licensing LLC filed in the District of Maine in October, the restaurant demanded a jury trial of the case. The restaurant’s filing stated that “there is no likelihood that consumers in the geographically relevant location of Brunswick, Maine would confuse Tao, a quiet neighborhood restaurant in Maine with Plaintiff TAO, a Las Vegas and New York nightclub whose website features hip/hop techno music and scantily clad employees and patrons.”
The answer also stated that the Chinese words are graphically different and have different definitions. Tao, as used by the defendant, translates as “peach,” and the plaintiff’s use of the word “TAO” translates to “the way.”
Tao Licensing described its TAO New York and TAO Las Vegas restaurants as “high quality Asian-themed restaurants and entertainment venues.” It claimed the defendant’s use of the Tao mark “makes it highly likely, if not inevitable, that consumers and members of the general public will be confused” and assume that TAO Licensing owns or is affiliated TAO Maine.
The plaintiff’s claims include unfair competition, trademark dilution, and violation of Maine’s uniform deceptive trade practices act and cybersquatting.
Tao Restaurant’s lawyer, Jim Goggin, a partner at Portland, Maine-based Verrill Dana, said, “People going to a restaurant in Brunswick, Maine are not going to think they’re going to a nightclub in Las Vegas.” Goggin also said that he plans to file a dismissal motion at the appropriate point in the case, but is confident that his client could prevail at a jury trial if necessary.
Tao Licensing’s lawyers at Kenyon & Kenyon of New York and Pierce Atwood of Portland, Maine, did not respond to a request for comment.
Douglas Masters, a Chicago intellectual property partner at Loeb & Loeb who isn’t involved in the case, said that plaintiffs with a business in a different jurisdiction than that of the defendant “have to be able to say their name has a relevance in that particular market.…You have to be known there [in the defendant's jurisdiction]…They’re going to have show that their reputation extends to that market.”
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