Intellectual Property Rights Are No “Picnic”

It’s no secret that owning and operating a business is difficult. You have employees to take care of, customers to please, and many other responsibilities that are part of daily operations. However, sometimes the simple idea of naming a business or entity can prove to be daunting, especially if you ultimately decide to trademark that name. Unfortunately for one restaurant in Austin, this scenario was no picnic.

In the case of Picnik Holdings, LLC v. Bento Picnic, LLC, Case No.: 1:18-cv-00897, the U.S. District Court for the Western District of Texas, Austin-based butter-coffee maker and restaurant Picnik has accused another Austin-based restaurant, Bento Picnic, of trademark infringement and unfair competition.

Picnik opened in 2013 as a food trailer on South Lamar Boulevard. The small establishment serves gluten-free grab-and-go style breakfast and lunch items, as well as butter-coffee and bone broth. In 2016, they opened a flagship restaurant on Burnet Road and now run two food trailers in South Austin and operate a café inside a Whole Foods in Upland California. Just last year, Picnik raised $7.5 million in equity from Karp Reilly to grow both its consumer packaged goods as well as its café business.

Meanwhile, Bento Picnic was founded in 2015 by Leanne Valenti and began selling health-oriented Japanese bento boxes at the Texas Farmers’ Market in Austin’s Mueller development, as well as online and through a delivery service. In 2018, Valenti opened a brick-and-mortar Bento Picnic on Cesar Chavez Street, which serves bento boxes as well as grab-and-go meals, curry bowls, and soups. Valenti decided on the name Bento Picnic in 2014, at which time she purchased the domain name for a website. “I made sure no one was using bento and picnic together first,” she said.

In July of 2018, Valenti received a cease and desist letter. Subsequently, she was served with a trademark lawsuit later that same year filed by Picnik. Valenti has since said, “the dispute is centered around my use of the word ‘picnic’ which is a generic word that describes food being eaten outside. My take on Japanese-style ‘bento picnic’ is very unique from their concept, and I began my business without being aware of their existence.”

In the lawsuit, Picnik alleged the two businesses are in fact very similar. Bento Picnic markets itself to the same clientele as Picnik, it has served similar products such as blondies, guacamole and crudité, curry, chocolate chip cookies and coffee, and it has a similar logo. In addition, “The words “picnic” and “picnik” are pronounced identically,” according to the lawsuit. Valenti recently obtained summary judgment in the case; it is not clear whether there will be an appeal.

Houston Trademark Infringement Attorneys

Certain types of intellectual property can be protected by trademark to prevent other individuals or businesses from profiting off of your distinct brand. The case referenced above is a prime example of the type of dispute that can arise over similar business names and trademarks. Registering your trademark with the U.S. Patent and Trademark Office protects it from being used without your consent for ten years. The mark can subsequently be renewed on an ongoing basis. Issues can arise when entities have names that are too similar, which can result in legal action. If you believe your business needs legal assistance with a trademark infringement case, contact the professionals at Adair Myers Graves Stevenson today. Our experienced intellectual property lawyers can help protect your trademarks by registering them with the U.S. Patent and Trademark office. Our experienced intellectual property litigators can help with lawsuits to pursue or defend claims of trademark infringement.