Did You Know that “Barcade” is a Federally-Protected Trademark for an Arcade Bar?
Why you should be careful how you name your establishment.
Everybody loves arcade bars. These trendy gathering places mix drinking and socializing with video games and nostalgia – appealing to a wide variety of patrons. The easy shorthand portmanteau, “barcade,” is often used to describe these establishments. However, have you ever noticed that the term barcade is actually rarely used in the names or advertising for the establishments?
As you may expect from a blog on legal topics, there is a legal reason for this – BARCADE is a federally-protected trademark for arcade bars owned by a company in Brooklyn, NY. Not only does this establishment own exclusive rights to the term, but this business actively – and some would say, aggressively – polices and enforces against unlicensed use of the term by sending cease-and-desist letters to establishments it thinks are infringing on its mark.
Paul Kiermizian, Pete Langway, and brothers Kevin, and Scott Beard founded the Barcade in Brooklyn in 2004 and filed for a trademark in 2007. Since then they have filed for 35 trademarks in the US and abroad. In addition, since Barcade has had registration for so long now the mark is now afforded “incontestable registration” meaning the mark maintains a status where the owner does not have to prove its distinctiveness. This is a prime example of how valuable a trademark can be to a business.
The purpose of trademark protection is to maintain exclusive use of the mark by having the ability to stop other people from using it. By Barcade regularly seeking to enforce its trademark rights against other parties, many businesses have changed their name to remove the word “barcade.”
Why is the Owner of BARCADE so Aggressive?
There are two reasons why BARCADE is enforced so heavily. First, while it may seem aggressive to send cease and desist letters all over the country, trademark owners actually have a duty to police infringing uses or the strength and value of their marks can be diminished. Because Barcade has this duty to protect its marks, it actively polices use of the term by other establishments and scans for advertisements using their mark and hashtags on social media.
Second, BARCODE as a trademark could potentially be in a tenuous spot as a protectable term. A term can only be protected as a trademark if the term is “distinctive” for the goods or services with it. Generic terms cannot be protected – such as “trucks” for large cars or “apple” for well, apples. Made-up words like PEPSI or arbitrary terms like using “apple” for computers are highly protectable. However, there are a number of terms in the middle of this spectrum that are more complicated. For example, descriptive terms like “best” or “rolled” for cigars are much harder to protect because the terms should be available for everyone to use. There are times where such terms can be protected – but the details get complicated quickly.
It might seem then that BARCADE is descriptive because it is just the combination of the words “bar” and “arcade” – which directly describes what the establishment is. However, the owners of BARCADE were able to obtain registration because they got in early, before the term was common, and were able to rely on the combination of the words to hold distinctiveness.
Now, BARCADE is somewhat at risk of losing its trademark significance. Terms that were at one time distinctive can lose trademark significance when the term comes to mean the goods or services associated with it. For example, aspirin was a registered trademark at one time before becoming generic. Escalator, cellophane, and laundromat were all also once protected trademarks. This process of losing trademark meaning is known as “genericide.” Several well-known brands have been at risk of genericide over the terms but worked diligently to protect their marks. Examples include Kleenex, Xerox, and Google.
Now that arcade bars are commonplace in every city, the term “barcade” has entered common parlance to describe such establishments. This may be the main reason why the owners of BARCADE are so aggressively policing the mark - to keep their mark from becoming generic and therefore losing all exclusive rights to the term.
Lessons from BARCADE
There are many potential takeaways from the BARCADE story; however the following are the most important for business owners:
It is important to search and vet every potential business name to ensure that you would not be infringing anyone else’s rights.
You should pursue federal trademark protection when available because it is both powerful and valuable.
Once you have a registered trademark, you must work diligently to protect it.
If you need help with your trademark in regard to its distinctiveness, development, or registration, or if you have received a cease and desist letter over trademark use, contact Scott Brown at 614-340-0011.