Famous restaurant claims competitor is trying to steal logo - wave3.com-Louisville News, Weather & Sports

Famous restaurant claims competitor is trying to steal logo

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SAINT MATTHEWS, KY (WAVE) - A fishy problem for a local restaurant, that has some customers seeing double. A famous old fish house that's been in business for 30 years claims one of it's competitors is trying to rip off it's name. So WAVE 3 Troubleshooter Eric Flack dove in head first to find out what's going on.

For 30 years The Fishery on Lexington Road has reeled in customers in the heart of St. Matthews. Now the restaurant's owners said someone else is trying to cash in on its name.

"Without a doubt," said owner Matt Clark. Clark is doing everything he can to sink the other restaurants plan. He is hiring an attorney and talking to the WAVE 3 Troubleshooter department to send a message.

"The Fishery is not the Fish-Fry house," Clark said.

The Fish-Fry House opened on Bardstown Road last October, but owner Shahram Pouranfar told the Troubleshooter he doesn't see what Clark is so upset about.

"I haven't had any problem with this really," Pouranfar said of Clark's complaints the Fish-Fry House sign looks very similar to the Fishery's sign and that it violates federal trademark laws.

But the Fishery has had problems.

"I got calls when he opened congratulating me on my new Bardstown Road store," Clark said.

In fact, long time customer Joe Davis got hooked.

"I thought when I saw their sign it was one of these locations," Davis said.

Pouranfar actually does own an old Fishery location on the Outer Loop. He changed the name to Fishery Station but kept the logo with the family's permission when he bought it from the Clark family in the mid 1990's. But both sides confirm Pouranfar made a gentleman's agreement not to open any other restaurants with the Fishery logo within 5 miles of the St. Matthews store.

Which is why Clark asked Pouranfar pick a different name and logo before he opened. Pouranfar changed an "E" to an "F" and Fishery became Fish-Fry House. The font, and raised "F" and "Y" in the sign stayed the same.

Pouranfar said the last restaurant he owned at the Bardstown Road location lost thousands, and tying the location in the Fishery Station was the only way he could turn businesses around and avoid filing for bankruptcy.

"I made my hair white in this business," he said, "and I didn't want to lose it just by having another name."

The Fishery's attorney's sent Pouranfar two cease and desist orders threatening to sue for federal trademark infringement. But Pouranfar said he registered the name and design of the Outer Loop store in his name in Kentucky after he bought it.

In an email, Brian McGraw, an attorney with the law firm of Middleton-Reutlinger and lead counsel for The Fishery, said Pouranfar's defense would not hold up in court.

"In the U.S., trademark rights are based on the use of a mark. In general, the law states that the first person to use a mark in connection with the sale of products or the performance of services has priority to that mark and would be considered the owner. Even if a party does not own a federal or state trademark registration, it can still be the owner of a mark if it was the first to use a mark and the mark is presently in use. It is important to note that a registration is not required under the law and that just because someone has a registration it doesn't necessarily mean that they have superior rights - or any rights at all if the registration was improperly issued.

Based on the above description of the law, it is clear that our client's usage of the mark and design "the fishery" preceded any alleged usage on the part of Mr. Pouranfar, or the fish fry house," said Brian McGraw

Pouranfar admits he made the Fish-Fry House sign look as much like his Fishery station sign as possible for financial reasons and he has no plans to change his sign.

"To me St. Matthews is very far from here," Pouranfar said with a laugh.

Matt Clark said his family is still weighing the costs of a lawsuit against the impact to their business.

"It is unfair to the customers if they think they are walking into a restaurant that is not what they think it is."

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