Portland law firm defends Brunswick restaurant in trademark lawsuit

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BRUNSWICK — After becoming the target of a lawsuit by a national chain, a local Asian restaurant owner Tuesday said her 5-month-old business will be defended  by a Portland law firm.

The 40-seat Tao Restaurant was sued Oct. 2 by TAO Licensing LLC, which claims the 23 Pleasant St. business is illegally using the “Tao” name.

The Delaware-based company runs TAO New York, an Asian restaurant, and TAO Las Vegas, a nightclub and Asian bistro that made $55.2 million in its first year of business, according to a 2007 report in The New York Times.

“The TAO Venues are among the largest, busiest, and most well-known restaurant and entertainment venues in the United States, with the first restaurant opening in 2000 and the venues now frequented by millions of people each year,” according to the complaint filed in Federal District Court in Portland.

The Delaware company also accused the Brunswick restaurant of violating state and federal trademark and unfair competition laws; federal trademark dilution, and violation of Maine’s Uniform Deceptive Trade Practices Act and the Federal Anticybersquatting Consumer Protection Act.

“Defendants’ use of the names ‘TAO’ and ‘TAO Maine’ for their Asian restaurant is an effort to free-ride on the enormous goodwill established by Plaintiff’s well-known and famous TAO Venues,” according to the court documents.

Cecile Stadler, one of Tao Restaurant’s owners, said she doesn’t see that. 

“It’s really kind of absurd,” Stadler said, adding that the restaurant, which opened in May, does not try to emulate the feel of the New York or Las Vegas establishments to attract clientele.

She also said her restaurant uses the word “Tao” in a different way, noting that the word and “Dao” are represented by 85 different Chinese characters. This means the two words can have multiple meanings, Stadler said, though they have been diluted by the Romanization of the Chinese language.

Her restaurant’s use means “peach,”Stadler said, while the Delaware company’s use means “the way.” Stadler said she and her husband and daughter researched the word and found that many U.S. restaurants use it, according to the Bangor Daily News.

Howard Shire of New York City law firm Kenyon & Kenyon, which is representing TAO Licensing LLC, told the Bangor Daily News last week that the company has been making similar actions against other establishments that use “Tao” for their names.

A search of public court records on Justia.com found that the Delaware-based company filed a similar complaint on Sept. 13 against a New York-based Asian restaurant called Tao Syosset.

TAO Licensing’s complaint against the Brunswick restaurant claims the larger chain has suffered “substantial and irreparable damage and injury in  particular to its valuable goodwill in, and the distinctive quality of, its famous TAO Mark” along with “monetary damage, loss and injury, an an amount to be determined at trial.”

As a result, the company is seeking a monetary award plus the Brunswick restaurant’s profits, and court and attorneys’ fees.

It is also seeking the destruction of any materials associated with the “Tao” name at the Brunswick restaurant, along with the transfer of its domain name, www.tao-maine.com.

James Goggin, a partner at law firm Verrill Dana, Wednesday said he will represent Tao Restaurant pro bono. He said he expects to submit a response to TAO Licensing’s complaint on Oct. 25.

“In general, trademark owners have to protect their trademarks in order to keep them,” Goggin said. “But the ultimate question is whether there’s going to be confusion caused between (the two parties as a result of the infringement).”

Stadler said another lawyer and law firm also offered pro bono representation, and she has received encouraging emails and messages via social media.

“The show of support has just been tremendous,” she said.

Dylan Martin can be reached at 781-3661 ext. 100 or dmartin@theforecaster.net. Follow him on Twitter: @DylanLJMartin.