NoHo Barcade Fights East Coast Doppelganger’s Trademark Infringement Claims

By Joseph Mandour on September 21, 2012

pac_man1-150x150Los Angeles – A new arcade game and craft beer themed bar under construction in North Hollywood struck back this week against a trademark infringement lawsuit filed in August by the proprietor of three bars in the Northeast that also use the name “Barcade.”

The trademark Barcade is not used in interstate commerce, and Barcade LLC should be barred form asserting its claims by the fair use doctrine and the first sale doctrine, among other reasons, NoHo Barcade says in its Monday answer to Barcade LLC’s complaint in the Central District of California.

Barcade LLC’s claims should also be barred due to a general lack of fame of the trademark, NoHo Barcade says. NoHo Barcade acted with innocent intent in using the name, it says.

The alleged trademark is merely functional, and so is therefore contestable, not a trademark from its inception and incapable of protection under the law, NoHo Barcade says. The claimed trademark is simply a generic name for goods and services, is not inherently distinctive and has not acquired distinctiveness, since consumers do not associate the trademark with Barcade LLC alone, it says.

Moreover, there is no actual confusion or even a likelihood of confusion between Barcade LLC’s name or trademark and that of NoHo Barcade, according to NoHo Barcade.

Barcade LLC registered the trademark for the name Barcade with the U.S. Patent and Trademark Office in March 2008 in relation to bars and bar services. It says it used the trademark as early as October 2004.

The plaintiff company registered the trademark Barcade in April 2011 to cover beverage glassware, foam drink holders, sports caps and hats, sweatshirts and T-shirts, as well. It claims to have used the trademark as early as October 2005 with respect to those categories of goods.

The East Coast company owns three bars that operate under the Barcade trademark in Brooklyn, Philadelphia and Jersey City.

The Barcade trademark is inherently distinctive and represents exceedingly valuable good will, Barcade LLC says. It claims the trademark has become well known throughout the general community of adults looking for an entertainment establishment with arcade games.

“Plaintiff has developed a very positive reputation for its products and services and has been recognized as a leader and a pioneer in the field of arcade themed entertainment establishments that combine bar service and a variety of arcade games,” the complaint says.

Barcade LLC contacted NoHo Barcade to request it stop using the trademark, and NoHo Barcade refused, according to Barcade LLC.

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