Denise Whiting, owner of Café Hon in Baltimore, announced this week she would abandon her trademark claim on the word “Hon.” Personally, I thought the trademark claim was a bad business decision and somewhat of an affront to the Hon culture.
As a transplant from the D.C. suburbs, I have taken to Baltimore because of its blue-collar work ethic, eclectic personality and this weird appeal of the “City that Reads” you can truly appreciate only if you live here. To me, “Hon” is Baltimore, something that could not be trademarked or owned.
(I also thought, however, that I would rather eat at nearby Golden West Cafe, so my boycott of Café Hon was largely a culinary decision and not one of true protest.)
As an attorney, however, I wanted to know the actual law on the issue instead of relying on news reports. Fortunately for me, the answer was within easy reach.
I walked down the hall at my office recently to go straight to The Source — or, in this case, The Sources: Kimberly Grimsley and Pamela Riewerts, two trademark lawyers in our Intellectual Property Department at Bowie & Jensen. Here are the pertinent parts of our conversation:
Me: So Café Hon is giving up the trademark on “Hon.” What does that mean?
TS: A trademark is a distinctive name, symbol, slogan or design used in connection with particular goods and services that identifies and distinguishes the source of the goods and services of one party from those of others. Sometimes, a trademark registration prevents others from using identical or similar marks in connection with the same or related goods or services — if the owner of the trademark registration was using the mark first or was the first to file the registration application on an intent-to-use basis. It acts as a touchstone for many businesses because it is the primary way that businesses distinguish their products or services from their competitors as well as create and build trademark recognition among consumers.
Me: So, what does it mean?
TS: A federal trademark registration on the principal register is presumed to be a valid trademark and it provides nationwide rights of priority to the holder. Technically, if she formally abandons the federal trademark registration for “Hon,” she gives up her right to bring forth any actions to preclude others outside of her geographic market from using the mark in a similar manner to how she is using it.
For instance, if someone uses “Café Hon” in connection with a restaurant in Georgia or sells “HON” calendars in New York, she will not be able to assert any rights against them. However, it is the use of a trademark that gives an owner trademark rights, not the registration alone; therefore, a user of a trademark has common law rights in their geographic territory (if they are the first user of the mark).
Thus, if someone opens a “Café Hon” next year in Germantown, she may still have an argument to stop that party under common law rights, as people typically do not associate the word “Hon” with restaurant services. However, if someone in Maryland sells bumper stickers, pens or calendars with the word “Hon” on them, she wouldn’t have much ground to stand on under common law, given the strength of the term of endearment “Hon” here in Baltimore and the widespread use of the term even before her time.
For this reason, there were grounds to attack most of her “Hon” registrations, even though the marks were registered, but her registrations did deter others from using the mark as opposed to spending a large amount of time and funds to fight them.
Me: What happens to “Hon”? Can someone else trademark the term?
TS: Yes. Any third party who actually uses or even one who has a bona fide good faith intent to use the mark “Hon” in connection with goods and services could go to the U.S. Patent and Trademark Office and obtain a trademark registration for the term “Hon” for a particular good or service (i.e. a clothing line or a bar).
For instance, the owner of a hotel in Baltimore or even in Texas could file an application to use the mark “Hon” in connection with its hotels. Once an application is filed with the trademark office, and if no one opposes it, the office may issue a registration for the mark. In fact, it appears someone from the Baltimore area filed an application earlier this year.
Me: So I could get a trademark registration for the term “Hon”?[Crickets Chirping]
TS: Well, technically, yes, if you are using it or have a good-faith intent to use it on certain goods or services and no one opposes it, but…
Me: Bad idea?
TS: Yes — particularly if you are based in or close to Baltimore.
So, in a nutshell, although the term “Hon” could always be used freely in Baltimore vernacular, in light of Ms. Whiting’s abandonment, the term “Hon” can also be used on shirts, glasses, mugs, napkins and bumper stickers with no real threat from its prior registered trademark holder.
Café Hon is hoping that the return of “Hon” to the people of Baltimore will put the issue to rest and the diners will return to the restaurant. As for a rule of thumb, even if something is legal, it doesn’t always make good sense.