BusinessReport.com

Lady Liberty holds high her torch of freedom in front of Johnny DeAngelo’s New York Pizza and Italian Restaurant on Jones Creek Road.

“I believe in what she stands for,” he says, pointing to the iconic image as Dean Martin croons over a sound system as DeAngelo’s enters his 11-month-old pizzeria.

It’s the Friday rush. Patrons flow into an eclectic but cozy restaurant with a New York City décor bedazzled with touches of Italian red and green. A parade of hot, stone-oven pizzas buzz by to a Christmas party in the main dining room, leaving behind sumptuous aromas of melted cheese and toppings.

Again, Johnny points to his Statue of Liberty and the plentiful array of photographs of it on the walls, heartily stating, “I believe in her and in America.”

Without warning, he leaps over to a table of people devouring pizza, greets them and asks if they’ve ever confused his place with any of his nephew’s restaurants around Baton Rouge. They have not, they say, quickly volunteering they’ve tasted pizza in many states, and this is the best they’ve eaten.

Despite the high praise, Johnny’s thoughts are on his nephew, Louis DeAngelo, who recently advised him in writing to change his pizzeria’s name or face legal action. Johnny fired back with an e-mail campaign that included a questionnaire on whether the pizzeria’s name has ever caused confusion. He also posted many comments, pro and con, on his Web site.

Louis quickly responded there is no lawsuit, but maintains it’s “a copyright protection issue” that he intends to pursue “after the first of the year.” More recently, he said, “It’s not in me to lower myself to respond to some of the things he’s done. I’ll be happy to sit down and lay out all the truths as they are after the first of the year and we’re through the holidays.”

Although Johnny now says he’d like the family feud to go away, he still called his nephew’s copyright concern “BS.” His name is hardly noticeable in his advertising, he insists, and although “two or three customers” might have entered Louis’ restaurants with his coupons, he doesn’t see how that hurt his business.

“Just call off the lawyers,” he says, calling for a truce. “It’s Christmas. We can co-exist.”

It is the week before Christmas at Louis DeAngelo’s Casual Italian Dining on Coursey Boulevard, one of six locations in the Baton Rouge area, where white lights cast a soft, cheery glow on a sizeable dining room.

Singer Bobby Darin’s “Beyond The Sea” has the steady lunch crowd snapping in a distinctly Italian setting of stone floors, red tablecloths, shelves of wines and elegant paintings. A man at a neighboring table opens his menu, points to the New York-style oven-baked pizzas featured prominently and proclaims them “the best pizza around.” The wait staff, dressed in black, zooms by with pans of pizza and plates of fancier fare like seafood cannelloni.

Both restaurants are very Italian and include “DeAngelo” as part of a longer name. It’s clear they’re also very different. So why are uncle and nephew at odds over a name?

That’s because it takes considerable effort and time to build a brand, says Jon Cato, managing partner of Object 9, which helps businesses develop a market identity.

“With the intellectual property and trademark, you clearly want that different than your competitor,” Cato says. “In today’s really competitive environment, it’s getting harder to differentiate yourself with just products and services. What’s really important is the brand—the consistent experience your customers have every time they deal with you. Your brand is your essence, promise and personality.”

The market mantra applies: Customers buy because they know what to expect.

“If there’s any confusion, I would see why he would be upset because once you have it established it you want to keep it going,” he says. “You don’t want someone to take your equity, plus you don’t want to diminish that experience.”

On the legal side, including a family name in a business name when others are using it in the area is typically an instant recipe for confusion in what is a trademark dispute, says Bennett Ford, a registered patent attorney in Baton Rouge.

“You can own the name DeAngelo in relation to a class of goods or services,” says Ford, who has dealt with four cases involving a family business name in his career. The standard in these cases is “likelihood of confusion.” This means “if a substantial portion of the public is confused by use of a similar name there can be a trademark infringement. You don’t have the defense that you own your last name.” Sporadic incidents aren’t likely an infringement, but many people entering Louis’ restaurants thinking they’re at Johnny’s place—or vice versa—could be a case.

An important point about trademark law is, while it gives the trademark owner the right to protect the name, it’s really aimed at protecting the consumer.

Photo by Marie Constantin

Louis DeAngelo Jr.

“We don’t have the trademark police out there making sure they aren’t using each other’s name,” Ford says. “But from a policy standpoint, you don’t want businesses with several of the same names because it creates confusion in case one of them is selling something bad or diseased. They need to be able to identify where they bought it from.”

Since both Johnny and Louis sell Italian food, Ford says the court would have to determine if the public is likely to believe the two are sponsored or affiliated with each other. “If you’re Louis and you’ve got a box of Johnny’s coupons, that’s pretty good evidence, but one or two coupons isn’t nearly as compelling.”

Adding many additional elements to the business name can be helpful, although he says there is no line there either. There are other considerations, like whether the DeAngelo name was in big letters or if other aspects are emphasized. Trademarks are limited to where a person does business so overlapping markets with competitors can pose a problem with confusion. This is an area where the Internet has created many issues, making businesses less regional.

“A name has almost zero value until you’ve used it,” Ford says. “The value comes with people getting to know the business through the name. “

Johnny’s situation is stereotypical. New business owners often don’t check the U.S. trademark Web site to see if their business name is already registered or take the time to register it, which they should do before starting business. Without it, several months or even years later, a registrant can come along with that name and legally demand an older business to bear the expense of a name change, which he’s seen happen in Baton Rouge. Protecting a trademark is not expensive, he says, unlike litigating a trademark that can cost thousands of dollars.

In the meantime, pizzas are still flying at the pizzerias. A more reflective Johnny admits he’s apologized for earlier statements he made about his nephew and wants to move on. While he concedes Louis’ concern about his 16-year investment is fair, he maintains his 11-month-old pizzeria isn’t remotely causing problems for his nephew’s restaurant chain.

“I could really see his point if I opened in a heavy traffic area and stuck DeAngelo real big there, but my name is barely noticeable on the sign,” Johnny says. “We’re not causing confusion.”