Columbia Firehouse trademark opposition dropped by Firehouse Restaurant Group

Columbia Firehouse trademark opposition dropped by Firehouse Restaurant Group

By Chris Teale (Photo/Chris Teale)

The Columbia Firehouse has stood at 109 S. St. Asaph St. since 1883, served as a working firehouse for the city’s Columbia Steam Engine Fire Company, and in its second life has been a restaurant and bar for decades.

However, the current restaurant at the site, called Columbia Firehouse, ran into opposition from the Firehouse Restaurant Group, which owns Firehouse Subs, Inc. when it attempted to trademark its name. Firehouse Restaurant Group spent the majority of 2015 challenging the restaurant’s application with the U.S. Patent and Trademark Office.

Columbia Firehouse, operating under the business name 109 South Saint Asaph, LLC, applied for the trademark on October 11, 2013, but Firehouse Subs challenged the application with the Trademark Trial and Appeal Board at the USPTO in a filing dated April 29, 2015. But after proceedings were suspended on December 7 and not set to resume until June 4, 2016 the parties reached a settlement, so Columbia Firehouse can continue the trademark registration process.

Megan Bailey, spokeswoman for the Neighborhood Restaurant Group, which owns Columbia Firehouse, confirmed on December 21 that the two sides resolved their differences but did not provide any further details. Cecily Sorensen, spokeswoman for the Firehouse Restaurant Group, said in an email that the agreement between the two sides “fully satisfies everyone’s interests.”

The Neighborhood Restaurant Group describes itself on its website as “an award-winning collection of independent and idiosyncratic businesses devoted to the culinary arts in Washington, D.C. and Virginia.”

The group currently operates 17 eateries, with another two set to open in the future. In general, restaurants register their names as trademarks to protect their brands and fend off any competitors.

Firehouse Subs opposed the trademark on the grounds that it would cause confusion between the two organizations and on the basis that it has priority use of the word “firehouse” for restaurant services. Firehouse Restaurant Group was granted a federal trademark registration for the “firehouse” word mark in 1995. Firehouse Subs was founded in 1994 by brothers Robin and Chris Sorensen in Jacksonville, Fla., and specializes in hot subs. It has more than 860 franchises operating across the country and Puerto Rico, according to court documents, with the closest locations to the city of Alexandria in Kingstowne, Springfield, Annandale and on U.S. Route 1 near the Mount Vernon Country Club.

In its notice of opposition against the trademark, filed by its attorney Richard S. Vermut of Jacksonville law firm Rogers Towers, P.A., the Firehouse Restaurant Group emphasized the alleged potential for confusion between Firehouse Subs and the Columbia Firehouse, especially as the two offer similar services.

“The applicant’s mark is so similar to opposer’s marks that applicant’s mark is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection or association of applicant with oppose, or as to the origin, sponsorship, or approval of applicant’s goods, services and commercial activities by oppose, thereby causing damage to opposer,” the motion reads. “Applicant’s goods are so related to the very broad range of goods and services associated with opposer’s marks that buyers are likely to assume a common source or sponsorship.”

Representing Columbia Firehouse, attorney Michael Chamowitz of Alexandria-based firm Chamowitz & Chamowitz, P.C., argued that confusion between the two brands was highly unlikely, especially given the differences between the two companies.

“[The] applicant states affirmatively that its mark, when compared in its entirety, is neither confusing by sight or by sound with the marks of the opposer, and the stand-alone fine-dining full-service concept of the applicant differs vastly from [the] opposer’s sandwich and deli restaurants and related merchandising and it is unlikely that the source of applicant’s goods and services would be confused with the opposer or vice versa,” reads the answer to the Firehouse Restaurant Group’s opposition motion, submitted on June 8.

With the opposition dropped by the Firehouse Restaurant Group, Columbia Firehouse can now proceed with its trademark application, but it was not the first time that Firehouse Restaurant Group went to the courts to challenge an eatery with a somewhat similar-sounding name.

In 2008, Firehouse Restaurant Group sent a cease-and-desist letter to Heath Scurfield, owner of Calli Baker’s Firehouse Bar and Grill in Myrtle Beach, S.C. Firehouse Restaurant Group had a federal trademark registration for the “firehouse” word mark to cover restaurant services. As Scurfield had not filed a federal trademark application but was using the “firehouse” word in restaurant services, and because Firehouse Restaurant Group had franchises nearby, they attempted to stop its use.

But when the case went to court in response to allegations of 34 trademark infringements, it was found that the USPTO had erred in awarding the “firehouse” trademark, as Firehouse Restaurant Group committed fraud in its application by not mentioning its awareness of other restaurants using the word “firehouse” in their names.

This latest challenge could have been a way for the Firehouse Restaurant Group to re-assert itself in its use of the “firehouse” word, but with a settlement reached outside of court, that challenge appears to have failed.