Capitol Hill’s Honeyhole loses round in trademark battle over name

The Corleone is definitely worth a court challenge (Image: Honeyhole Sandwiches)

Pike/Pine dive bar and sandwich joint the Honeyhole is facing a legal battle over its very essence: its classic name.

Last month, the United States Patent and Trademark Office’s Trademark Trial and Appeal Board handed down its ruling affirming a decision rejecting Honeyhole’s application to trademark its 19-year-old Capitol Hill brand because of an existing claim on the name:

Owner Sean London tells CHS he is “disappointed in the decision” but declined to comment more as the trademark battle “isn’t over for us.”

In its appeal of the decision filed last year in April, the E Pike sandwich shop and bar argued that its registration as a “restaurant with bar specializing in serving proprietary unique sandwiches, local beers and alcohol in a vibrant, eclectic environment” did not conflict with the trademark previously granted to Irvine, California-based Sans Wine & Spirits for its Honey Hole “honey flavored whiskey.”

Part of its argument left E Pike Honeyhole’s lawyer taking a swipe at the uniqueness of honey whiskey:

But the board found that Honeyhole’s restaurant business — and its cocktail list — met the requirements for “something more” beyond the similar names, disqualifying London’s business’s trademark application.

The “something more” standard in trademark arguments has been expanded by the courts in recent years meaning a general increase in findings of “relatedness of goods and services in a likelihood of confusion analysis.”

It’s not clear why Capitol Hill’s Honeyhole was seeking the trademark and we haven’t heard back yet from Sans Wine & Spirits about the situation. In some cases, businesses may receive cease and desist letters when another company believes its trademark is being infringed. In other instances of trademark applications, an entrepreneur might simply be locking down a key business element as a company grows or prepares for changes.

For now, it’s business as usual at Honeyhole where, for now, at least, there doesn’t appear to be any court challenges lined up over its slogan: “Damn, that’s a good sandwich.”


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2 thoughts on “Capitol Hill’s Honeyhole loses round in trademark battle over name

  1. When looking at whether two brands are confusingly similar, one must look beyond comparing the actual goods and services that these two brands cover. One must look at related products and services as well. In this case, one brand was registered for whisky, while another one, an identical name, sought protection for bar services. Goods and services are not identical but are certainly related, thus creating a likelihood of confusion. The real lesson here is that the bar whose application was denied has allegedly been using their brand for 19 years. However, they only decided to protect their “classic name” in 2016. Regardless of the outcome of their trademarking process at this point, it would have been so much easier (and cheaper) for them to have secured their brand back in 1999 when they started. And it would have prevented the whisky company not only from blocking the name but also from distributing their whisky under the same name.

  2. When looking at whether two brands are confusingly similar, one must look beyond comparing the actual goods and services that these two brands cover. One must look at related products and services as well. In this case, one brand was registered for whisky, while another one, an identical name, sought protection for bar services. Goods and services are not identical but are certainly related, thus creating a likelihood of confusion. The real lesson here is that the bar whose application was denied has allegedly been using their brand for 19 years. However, they only decided to protect their “classic name” in 2016. Regardless of the outcome of their trademarking process at this point, it would have been so much easier (and cheaper) for them to have secured their brand back in 1999 when they started. And it would have prevented the whisky company not only from blocking the name but also from distributing their whisky under the same name.

    Andrei Mincov

    Founder and CEO of Trademark Factory® / https://trademarkfactory.com, the only firm in the world that offers trademarking services with a predictable, guaranteed result, for a predictable, guaranteed budget. We can help you register your trademarks with a free comprehensive trademark search, for a single all-inclusive flat fee, with a 100% money-back guarantee.

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