Hot Dogma

I decide to stop blogging the news, and the news decides to bite me in the bun. So to speak. I'm referring, of course, to today's column by Brian O'Neill, reporting that the folks at Hot Dogma downtown have received a letter demanding that they change the name of the shop. "Hot Dogma" allegedly infringes the trademark (well, service mark, to be precise) of South Florida's Dogma Grill.

How could a Pittsburgh restaurant offend a Miami business? The Dogma Grill does, in fact, have a federally registered service mark, No. 2786127 to be precise, for the mark: "DOGMA GRILL A FRANK PHILOSOPHY." That mark was registered on November 25, 2003, before Hot Dogma opened for business. A federal registration gives its owner national rights to the name over anyone who comes later. In trademark law, priority isn't everything, but it counts for a lot.

But there's more. Priority isn't the only thing. The real key is consumer confusion. Dogma Grill has a point only if consumers are likely to be confused about the source of the dogs. Will Pittsburghers think that Hot Dogma's dogs are produced by Dogma Grill? What if those Pittsburghers have visited Miami? Live in Miami part time? What about South Floridians visiting Pittsburgh who happen to stop by Hot Dogma? This gets complicated.

I don't mean to get on Hot Dogma's case; in fact, I agree with Brian that Dogma Grill is being needlessly dogmatic about the whole thing. But Brian writes:

I expect his letter is boilerplate stuff. If the holder of a trademark finds someone using a similar name, he is compelled to defend the mark. A person who expects to hold sole possession of "dogma'' must be very dogmatic indeed.

Hold on there: The idea that a trademark owner is required to challenge people who use similar name is a myth. Nothing in trademark law requires that Dogma Grill send a cease-and-desist letter to Hot Dogma. Sending letters like this is known as "policing" the mark. Trademark owners choose to send them because they're afraid that failure to "police" the mark would lead to the conclusion that the mark had been "abandoned," and then they would be permanently out of luck. But courts very, very rarely go down that path. (For law geeks, see, for example, the opinions in Wallpaper Mfrs., Ltd. v. Crown Wallcovering Corp., 680 F.2d 755, 766 (CCPA 1982) and U. S. Jaycees v. Philadelphia Jaycees, 639 F.2d 134 (3d Cir. 1981).) So long as Dogma Grill stays in business, and so long as Hot Dogma remains just the plucky little start up that it is, Dogma Grill would be just fine, in trademark terms, if it decided to back off. If "Dogma" for (hot) dogs starts popping up in all kinds of other places, then -- and only then -- will things change. Maybe.