Companies in Fight to Keep Their Trademarks; Similarity of Names, Logos, Missions Leads to Legal Challenges

Article excerpt

Byline: PAUL PINKHAM

The differences between a creek and a river - or between the initials BDP and BPD - are subtle.

Just how subtle could go a long way to determining whether two Jacksonville businesses get to keep their names or logos - including NASCAR driver Dale Earnhardt Jr.'s Whisky River at St. Johns Town Center.

Two trademark infringement complaints filed recently in Jacksonville have asked judges to determine whether Whisky River and BPD International freight company in Mandarin can continue to use those names. The complaints say the names, and Whisky River's logo are too similar to trademarks owned by Whiskey Creek restaurant chain and BDP International freight and logistics company in Philadelphia.

Such complaints are rare in Northeast Florida. Only nine trademark infringement cases were filed in the Jacksonville division of U.S. District Court in all of 2009.

But according to the companies that filed them, the price of protecting their names and reputations is incalculable.

In the Whiskey Creek case, lawyers for the Nebraska-based chain are fighting the battle on two fronts: in court and at the U.S. Patent and Trademark Office. The 15-year-old chain has 15 restaurants, including one Florida location in Port Charlotte.

The complaint says Whisky River's name, menu and circle logo are so similar to Whiskey Creek's that they will confuse consumers. That could damage Whiskey Creek's reputation, the complaint says.

"In particular, the public associates the Whiskey Creek mark with restaurants that have a wholesome, family-oriented character where children are welcome," the complaint says. "The character of the Whisky River restaurants and nightclubs are more adult-themed and sexually oriented."

A spokesman for Whisky River's parent company in North Carolina said Friday that's exactly what sets the two establishments apart. He said there is no conflict.

"They're kind of a steak house, and we're the furthest thing from a steak house," said J.R. Rhodes, spokesman for Earnhardt's Hammerhead Entertainment. "It's not even close."

Hammerhead has two Whisky River locations in Jacksonville and Charlotte, N.C. It registered with the trademark office in 2008, but Whiskey Creek's lawyers say that registration was for bar and nightclub services, not food or restaurant. Whiskey Creek, which registered its trademarks in 1996, is appealing Whisky River's registration at the trademark office. …