Barcade Tells Des Moines Barcade to Stop Calling Itself a Barcade

On October 11th, a new bar opened in the East Village section of Des Moines, Iowa. The name of the bar is Up-Down, and the concept is simple: booze and arcade games. So, the bar referred to itself as a “barcade”. But that seems to have gotten them in trouble with Barcade, the bar-arcade concept 1,000 miles away in Philadelphia, New Jersey and Brooklyn.

It turns out that the Brooklyn-based firm that owns the Barcade locations out this way also owns several separate trademarks on the term “barcade,” covering everything from Barcade beer koozies and Barcade t-shirts to Barcade bars, Barcade franchise services and even Barcade software.

Barcade has sent the owners of the Up-Down barcade a cease-and-desist letter, insisting that they not use the term. It reads, in part:

Barcade has therefore asked us to contact you to advise you of its rights in the BARCADE® mark and to request that you immediately and permanently discontinue any and all use of “Barcade”, and any confusingly similar derivation of BARCADE®, including use as the name of your bar, in any signage or promotional materials, on any website, in any domain name and/or in any account on any social media site owned or controlled by you or affiliated with you (including Twitter and Facebook) and that you immediately refrain from referring to your bar as a “Barcade”…

[Your] use of “Barcade” is identical to our client’s BARCADE® mark and is being is used in connection with the identical bar services as provided by our client and as included in our client’s trademark registrations. Moreover, your use of “Barcade” in connection with a bar with arcade games directly overlaps with Barcade’s use of its BARCADE® mark…

Given our client’s rights and the serious nature of your infringement, we must demand that you immediately and permanently discontinue, and provide written confirmation that you have discontinued, any and all use of “Barcade”…

But Philadelphia-based attorney Jordan LaVine says that Barcade might have an uphill battle. LaVine, who leads the trademark-copyright practice at law firm Flaster/Greenberg and counts none other than the New York Times among his roster of clients, explains that while Barcade does have a right to protect its federally-registered trademark, the fact that the barcade in question is all the way out in Des Moines could make that rather difficult.

“Their ownership gives them the presumption that they are the owner of the mark throughout the United States,” says LaVine. “But when it comes to a geographically-remote restaurant or bar opening with a similar name, Barcade would need to still establish that the use in Des Moines is likely to cause confusion. They would have to show that they are planning to expand into that area or that their mark is known in that area such that confusion would result.” (Barcade’s attorney did not immediately return a call seeking comment.)

And LaVine, whose office is just three miles from the Philadelphia Barcade, says that he had never heard of the East Coast Barcades until my phone call. So the folks in Des Moines probably haven’t either.

LaVine explains that the precedent for this geographical argument goes back to a line of 1920s cases that resulted in what’s known–at least in trademark attorney circles–as the Dawn Donut Rule. (Visit the Harvard Law website for more than you ever wanted to know about that.)

Essentially, what that rule says is that even if there’s a chain of Victor’s Bagel Shops in California that no one in Philadelphia had ever heard of, I should be able to open a Victor’s Bagel Shop in Philadelphia. But should I want to open a restaurant called the Capital Grille in Birmingham, Alabama–a state that doesn’t have a Capital Grille–the corporation that owns the Capital Grilles across the country would have a pretty easy case against me, since the Capital Grille is such a widely recognized brand. Makes sense.

And, in this case, the Des Moines bar isn’t even named Barcade. It’s just referring to itself as a barcade, although LaVine argues that the word “barcade” isn’t generic enough–at least not yet–for that argument to stand up, i.e. don’t start calling your South Philly bar a “barcade” just because you have Centipede, Frogger and Ms. Pac-Man. You’ll lose.

“We are moving forward with business as usual,” says Up-Down barcade owner Sam Summers. “The term ‘barcade’ was never used as part of our name, so we don’t have anything to change, but this hiccup has been an unnecessary nuisance, especially while we are busy focusing on running a popular new establishment.”

In an attempt to appease Barcade, Up-Down did send a press release to the Des Moines media, clarifying “that it should be referred to with only appropriate common descriptors or simply by the term ‘arcade bar.'”

But good luck getting the media to comply with that. “The New York Times has been my client for over ten years,” says LaVine. “They will occasionally receive correspondence for the supposedly improper use of terms as descriptive or generic when a company believes they have exclusive trademark rights to that term. But there are very strong First Amendment protections. The trademark-holder has absolutely no relief.”

In other words…

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However Barcade’s fight over the use of the word “barcade” shakes out, Summers’ Des Moines barcade already has a leg up on our region’s Barcade barcades: Up-Down has Skee-Ball.