Soup Trademark War - Fordham Intellectual Property, Media & Entertainment Law Journal
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Soup Trademark War

Soup Trademark War

On September 23, a small Vietnamese restaurant announced that it had received a legal letter telling it to change its name.  The restaurant, Mo Pho, has been operating in South-east London for years. The letter came from Pho Holdings Ltd. and claimed that the company had trademarked the word “pho” six years ago. The letter also stated that Pho Holdings was the only one who could use “pho” in the title of a restaurant business. Pho Holdings operates the chain of Pho Vietnamese cafes, with eight outposts so far and a ninth to open soon.

Pho is the national dish of Vietnam. It is a deep and restorative beef broth with noodles, meat and fresh green herbs. Trademarking “pho” is the equivalent of trademarking “soup” or “pizza.” One person even tweeted about the issue, “how could they trademark the name of a national dish? Off to TM “soup” before it’s too late.”

Pho Holding responded to the criticism by insisting that it had not trademarked the dish, but only the company name and was only protecting its business interests. By September 24, Pho Holdings decided to drop the action against Mo Pho. In a tweet the company said, “We fully understand the sentiment and will not pursue the action against Mo Pho. Sorry guys.” Pho Holdings went on to say, “Whilst we will always want to protect the business we have worked really hard to build, we recognize that it is unnecessary to pursue action against independent Vietnamese operators unless they are truly passing off as us, as to benefit from the goodwill of our brand.”

            Trademark law is about protecting good will, so it makes sense that Pho Holdings mentions this as their concern. The company should not be allowed to have a trademark over a term, though, that is too generic or descriptive. Trademark terms are broken into four categories, listed from strongest mark to weakest one: fanciful or arbitrary, suggestive, descriptive and generic. A fanciful phrase is one that bears no relationship whatsoever to the product it describes, such as Exxon or Polaroid. An arbitrary term is in common usage but unrelated to the product, such as Apple Computers. Suggestive marks suggest a product in people’s minds, such as Coppertone sun tan oil or Playboy magazine. Descriptive terms describe the product or service offered, such as America’s Best Popcorn. A generic term is so associated with a particular product class that the term has become the natural way to refer to that type of product, such as aspirin.  It is much harder for a company to obtain a trademark for a term that falls into the descriptive or generic categories. In this case, it appears that Pho is a descriptive term and should not be able to be trademarked.

In other food trademark related news, eight separate applications have been filed in the UK to trademark the word cronut, a cross between a doughnut and croissant. Also, the Soho House Group has recently successfully applied to trademark phrases such as “duck shop,” “meat shop” and “steak shop” for a bunch of restaurants. The Soho House Group also has a trademark on the phrase “Dirty Burger” for some of its restaurants.

Ariel Sodomsky

Ariel Sodomsky is a second year law student at Fordham Law School and an IPLJ Staff member. She is interested in IP as it pertains to the fashion and entertainment industries.