A celebrity chef has asked a federal court to turn down the heat brought by a competing restaurant group cooking up a legal storm over whether they can legally stake a trademark claim to “the kitchen.”
Wolfgang Puck Worldwide Inc. and Wolfgang Puck Express Licensing LLC filed a complaint Feb. 24 in Chicago in hopes of preventing The Kitchen Café LLC from asserting protectable trademark rights over the term “The Kitchen.” Puck’s restaurants include The Kitchen By Wolfgang Puck and The Kitchen Counter By Wolfgang Puck.
The complaint noted TKC, based in Boulder, Colo., filed a federal complaint on Nov. 18 in Colorado against another entity, Wolfgang Puck Licensing LLC, alleging Puck’s restaurant names competed with TKC’s common law trademark. In its Chicago complaint, Puck’s businesses assert “the phrase ‘the Kitchen’ is fundamentally incapable of protection as a standalone trademark or service mark or as an element of a trademark or service mark because it is generic, or, at best, merely descriptive of such services, and that TKC’s assertion is legally untenable and factually absurd.”
Although TKC did not name Worldwide or Express, both based in West Hollywood, Calif., as defendants in its Colorado suit, Puck said that action shows TKC “has manifested a clear intention to assert its federal unfair competition and related state law infringement claim against Worldwide and Express, thereby creating an immediate and real actual controversy and giving them a reasonable apprehension of suit for these claims.”
In the Colorado case, Puck Licensing filed a motion to dismiss, arguing it is not subject to personal jurisdiction there, where it operates no restaurants and does not advertise. If that motion is granted, Puck Licensing would submit to jurisdiction in the Chicago district and join that claim. TKC filed an opposition to the motion to dismiss on Feb. 3, which Puck said enables to eventually assert infringement against all the Puck enterprises in Colorado.
“TKC has not acquired distinctiveness in ‘The Kitchen,’” the complaint states. “Its use of the name has been limited to no more than a handful of restaurants located in Colorado, Chicago and Memphis, Tenn. There are many, many restaurants unrelated to TKC which use the name ‘The Kitchen.’ In addition, there are hundreds of other restaurants which use ‘kitchen’ in their names in combination with other terms.”
Puck singled out attempts to claim exclusive rights in the Chicago area as “particularly egregious,” citing as evidence the four Lyfe Kitchen restaurants in River North, Streetervile, Lincoln Park and the Gold Coast. The River North Lyfe Kitchen, Puck notes, is roughly a block and a half from The Kitchen Counter. Two blocks away, The Langham, includes a restaurant branded as Travelle Kitchen, in the 300 block of N. Wabash Ave. Nine blocks away, on Wacker Drive, is One North Kitchen & Bar.
Further, Puck argues, the use of the Wolfgang Puck name in his properties is sufficient to distinguish his restaurants from any deploying kitchen in the moniker, thereby negating the need for entities like TKC to pursue legal action to protect the generic word kitchen.
The complaint seeks declaratory judgment asserting Puck’s use of his restaurant names does not constitute unfair competition under the Lanham Act, or trademark infringement or unfair competition under common law. It also seeks cancellation of, or entry of a disclaimer, in TKC’s federal trademark registration for The Kitchen Upstairs and The Kitchen Next Door.
Representing Puck’s businesses in the matter are attorneys from Barnes & Thornburg LLP, of Chicago.