Brixx nixes Brix: Decade-old eatery forced to change name
Since 1999, local foodies have associated the name "Brix" with chef/owner Karen Laetare's Mediterranean-inspired California cuisine, first at Brix Marketplace on Route 50, and then at Brix Terrace Caf© in the Pantops Shopping Center.
But on April 1, Laetare was forced to stop using the name “Brix” or face legal action from a budding North Carolina-based franchise moving to town this summer. While she’s been allowed to keep her website address– www.brixcafe.com–- her restaurant is now called The Terrace Caf© on the website.
“We hate doing this, but our hands are tied,” claims Barbara Morgan, a partner with Brixx: Wood Fired Pizza, which plans to open its first Virginia store in the old Boston Market space in Barracks Road Shopping Center. “We own the name and have a legal obligation. You can’t use a name people own.”
Brixx opened its first restaurant in Charlotte, North Carolina, in 1998, less than a year before Laetare opened Brix Marketplace, and now has 13 restaurants in North Carolina, South Carolina, and Tennessee.
Not quite a Pizza Hut-sized franchise, but online records of the United States Patent and Trademark Office suggest how the Brixx Pizza chain found a way to get the corporate name it wanted.
“Brix” was registered by a Napa Valley restaurant under Yountville Partners Inc. on June 10, 1997, while Laetare registered “Brix Marketplace” on December 25, 2001. However, under corporate name New South Pizza Inc., the pizza company allegedly purchased the rights to the name from Yountville Partners on November 8, 2005.
“I’ve spent all these years building my name in Charlottesville, and then this franchise just shows up out of nowhere,” says Laetare. “But I can’t afford to put my money into this fight.”
Indeed, local trademark law expert Sheldon Parker says that keeping the cost of litigation like this under $100,000 would be “very difficult," as just the initial discovery phase would probably cost Laetare $25,000 in the first few weeks.
Typically, trademark rights are determined by "first use," which can even override federal registration in some cases, says Parker. But in this case, the first user of "Brix" isn't making a claim; the company that allegedly bought the rights to it after Laetare began using it is. In addition, according to Parker, the fact that Laetare has been using the name for so long without a challenge would weigh in her favor.
“What do you think a local judge would say about a franchise coming to town and trying to take it away from her? " says Parker. " Eleven years is a long time. I would expect the courts to give her the right to use it in this geographic area.”
Attempting to claim exclusive national rights to a name also involves more that just registering the trademark, Parker explains. Just because someone registers 'Market Street Pizza' first doesn't mean they can go around the country demanding that every Market Street Pizza change their name. A company must prove that the name has a "secondary meaning" for consumers, meaning the name is widely known by consumers to be associated with your particular company. An attorney could argue that Laetare's Brix is more widely know by consumers in Central Virginia than Brixx Wood Fired Pizza.
Unfortunately, Parker says, the side with "deeper pockets" often forces its opponent to drop out before such cases ever get to court.
“It makes me sick,” says Laetare. “They don’t even use the essence of what Ã¢â?¬Ë?brix’ means, and they don’t even spell it right.”
Laetare says the name comes from the Ã¢â?¬Ë?Brix scale,’ an old wine-making term named after the inventor of a system for measuring the sugar content of grapes and wine. In contrast, she says, the fledgling pizza chain simply wants to call attention to its “brick” pizza ovens. (Laetare's Terrace Caf© also has a grilled pizza menu.)
“We hear it’s a great restaurant," says Morgan, "and we wish them the best.”
Despite the cordial words, Laetare hopes locals will support homegrown pizza restaurants like the Brick Oven in Rio Hill Shopping Center, the planned Fry’s Spring Station on JPA, and Rise PizzaWorks, which opened in the Barracks Road Shopping Center last October.
In protest, Laetare has flanked her new name with the first and last letters of her old name.
“I may have lost my R-I,” says Laetare, “but I still have my B-X.”
Updated 4/9/10 10:20am