Trademark Dispute: Tao Restaurant

Verrill Dana intellectual property litigation partner Jim Goggin defended Cara and Cecile Stadler, mother and daughter owners of Tao Restaurant in Brunswick, Maine against a complaint brought against them by TAO Licensing, owner of a chain of nightclubs with locations in New York and Las Vegas. TAO Licensing alleged that the Stadler’s family owned restaurant in Maine was trading on the notoriety and success of the nightclubs, which are “frequented by millions of people each year” and “visited by celebrities.” TAO Licensing alleged that it was “highly likely, if not inevitable” that customers will confuse the mother-daughter run restaurant in Maine with a nightclub in Las Vegas.

In defense, Verrill Dana highlighted that Chef Cara Stadler was a classically trained chef who has trained and practiced in some of the most highly acclaimed restaurants in the world. Returning home to Maine, the Stadlers chose a name for their restaurant that reflected a menu with influences from around the world. They chose Tao, which is written in Chinese as 桃 and which translates as “peach.” According to its trademark registration, Plaintiff’s use of the word “TAO” is written in Chinese as 道 and translates to “the way.” Verrill Dana argued that not only are the words graphically and by definition different, but there is no likelihood that consumers in the geographically relevant location of Brunswick, Maine would confuse Tao (桃), a quiet neighborhood restaurant in Maine, http://tao-yuan.me/, with Plaintiff TAO (道), a Las Vegas and New York nightclub whose website features hip/hop techno music and scantily clad employees and patrons. http://taolasvegas.com/.  

The case settled on confidential terms favorable to Tao Restaurant, which agreed to add the word Yuan in half size font to its Tao name, thus “TaoJuan."