ATLANTA (Legal Newsline) - The legendary Hollywood celebrity eatery Dan Tana’s will have to keep fighting to protect its brand against a similar-sounding restaurant in Atlanta after a federal appeals court reversed a ruling by the U.S. Patent and Trademark Office canceling the Dantanna’s trademark for fraud.
Chutter Inc., which owns Dan Tana’s restaurant, petitioned the Trademark Trial and Appeals Board in 2006 after Great Concepts applied to register Dantanna’s as a mark for its “steak and seafood restaurant.” Dan Tana, born Dobrivoje Tanasijević, was a Serbian soccer star who emigrated to the U.S. in the 1950s and established his eponymous Italian restaurant on Santa Monica Boulevard in 1964.
It became famous as a celebrity hangout, and Hollywood producer Aaron Spelling later named the main character in the TV series Vega$ after him, while Tana went on to produce films including The Aviator.
The trademark office action was suspended while Chutter sued Great Concepts for trademark infringement in federal court in Georgia. Chutter lost that case, with the 11th Circuit Court of Appeals affirming in 2010. Meanwhile, Great Concepts made a filing with the PTO declaring it had no pending litigation over the trademark, which was false.
Chutter seized upon this filing and petitioned the PTO to cancel the Dantanna’s trademark for fraud under Section 14 of the Lanham Act. The PTO canceled the trademark in September 2021 and Great Concepts appealed to the U.S. Court of Appeals for the Federal Circuit. In an Oct. 18 decision, the Federal Circuit court reversed.
The Lanham Act doesn’t authorize the PTO to cancel a trademark under these circumstances, the appeals court ruled, in a decision that drew a lengthy dissent. While the law allows trademark owners to contest a mark that was obtained fraudulently, the remedy for filing a false declaration to obtain incontestable status is to lose that incontestable status, the court ruled.
“When, as here, Congress sets out a lengthy list of statutory provisions, we will not lightly add to that list, lest we contradict what may well have been an intentional omission,” the court wrote. The decision doesn’t make filing a false declaration a “costless offense,” the court went on. Without incontestable status, the owner of a trademark will have a harder time defending it. The board can also sanction an attorney who files a false declaration.
Judge Jimmie Reyna dissented, saying the decision granted “a green-light” to file false statements “with the promise of great gain with little to no meaningful risk to the registrant.”