By now most cities have a bar / arcade. You know that place you can have a beer and play some old time video games like Rampage, X-Men, or Teenage Mutant Ninja Turtles. The name has become pretty generic by now but that hasn’t stop the owner of the BARCADE trademark from trying to stop other companies from using the name.
Barcade Inc., “The Original Arcade Bar,” is a New York-based company with locations in Connecticut, New York, and New Jersey. The main selling point is that each bar has a selection of arcade games for you to play while you drink. Barcade, Inc. advertises on its website that its locations offer a variety of classic arcade games from Donkey Kong to Tapper.
Barcade, Inc. owns a variety of trademarks containing the word “BARCADE.” Since 2007, Barcade, Inc. has owned the BARCADE mark in the realm of bars and bar services. The BARCADE mark has become incontestable, which means that the mark’s registration is conclusive evidence of the mark’s validity itself. This incontestable status also means that the mark can only be cancelled in specific circumstances. For example, an incontestable mark can be cancelled if it is proven to be misleading, if there was prior use of the mark by someone else before the registrant, or if the mark becomes generic.
As of 2015, Barcade, Inc. also owns the BARCADE mark for use in marketing its burgers, beer, and other alcoholic drinks. In mid-2017, Barcade Inc. also filed a registration for the #BARCADE mark for use online, but we’re still waiting on the PTO to register that one.
When Barcade, Inc. found out that the owner of the Texas-based Imperial Taproom bar was using the word “Barcade” in the advertising and promotional materials for its new venue, an arcade bar called Recreation, Barcade, Inc. had to put a stop to it. Both the Imperial Taproom and Recreation are owned by the same person operating through different limited liability corporations, allowing Barcade, Inc. to sue both LLC’s.
Barcade, Inc. claims that from July 2017 through February 2018, it made several attempts to contact the defendant. The complaint states that Barcade, Inc. sent cease and desist letters by e-mail and U.S. Mail on two separate occasions and attempted to follow up with the defendants over email twice afterwards. Unfortunately for the Imperial Taproom and Recreation, Barcade, Inc. did not take kindly to receiving no response.
In crafting its complaint to the Federal District Court for the Northern District of Texas, Barcade, Inc. didn’t have to dig deep to find evidence of the Imperial Taproom and Recreation using the BARCADE mark in an effort to promote the new venue. In the complaint, Barcade, Inc. cited a Facebook post by the Imperial Taproom, wherein it mentioned the opening of its new “Barcade,” Recreation:
Additionally, Barcade, Inc. noted that Recreation has certainly not been shy about using BARCADE in its advertising:
Barcade, Inc. argues that the Imperial Taproom and Recreation’s use of the BARCADE mark will cause confusion as to the source of the services. It claims, essentially, that if a consumer goes to Recreation, there’s a chance that the consumer may believe that it is affiliated with Barcade, Inc. due to its use of the mark. Barcade, Inc. also claims that this infringement is intentional and willful, which is especially prevalent in light of the lack of response to the communications Barcade, Inc. attempted to institute.
Barcade, Inc. has a pretty solid case here. After all, Barcade, Inc.’s BARCADE mark has achieved incontestable status, which will make it a lot harder for a small business such as Recreation or the Imperial Taproom to fight in court.
On the other hand, this may be an opportunity to argue whether the BARCADE mark has fallen into the generic category. If BARCADE is considered to be a generic mark, it would mean that BARCADE no longer signifies property of Barcade, Inc. Instead, it would be argued that BARCADE is generic because it is synonymous with any bar that has arcade cabinets or games, regardless of the owner of the bar or the association with the New York-based company.
There may be a solid argument that BARCADE has fallen into the generic trademark category like elevator or escalator did in the past, but Barcade, Inc. has been very careful about protecting its rights to its trademark. A similar battle was recently fought about the term COMIC CON which seems to have become quite generic as well. In 2009, it opposed another Texas bar’s attempt to register the BARCADIA mark and was successful. So many different things can happen this early in the case, but we’ll have to wait and see what the next steps are for the Imperial Taproom and Recreation.
Author, Caroline Womack, is a 2L at Quinnipiac University School of Law and primarily studies intellectual property law, focusing on video game and internet law.