By Steve Dolinsky
On September 25, Mitch and Cliff Einhorn quietly opened a new barbecue joint at 551 N. Ogden, just up the street from their other restaurant, the five-year-old motorcycle-themed Twisted Spoke. The 5,000-square-foot space is still under construction; the high, angled windows let in streams of light that illuminate piles of chairs where the pool table's going to be, and a hydraulic lift sits in the dining room, hoisting workers up to hang light fixtures. But the 25 beer taps are ready to go, the liquor license is in place, and the restaurant is open for lunch Monday through Friday from 11 to 3. The only thing the Einhorns don't have is a name.
For the last several months, Mark "Max" Brumbach, owner of Smoke Daddy, at 1804 W. Division, has been trying to prevent the Einhorns from opening under the name "Bone Daddy." In the case of Barbecue Marx, Inc. v. 551 Ogden, Inc., Brumbach says he's not opposed to another barbecue restaurant. But he is worried the similar names and proximity (the two restaurants are about a mile and a half apart) will confuse potential customers. "I'm doing what I have to do to protect my good name," says Brumbach. "What if I opened a 'Twisted Smoke' a mile away that served cheeseburgers and had a biker theme? What do you think would happen?"
On August 10, U.S. District Court judge Elaine E. Bucklo granted Brumbach's motion for a preliminary injunction, which means that, for now, the Einhorns can't use the name "Bone Daddy" to promote their new restaurant. "It's just preposterous," says Mitch. "We ran through all of the steps, did a trademark search, consulted with the Federal Trade Office, and worked out the intermediate problems already....This is just unconscionable."
Problems between the two Daddys began last year, when Brumbach heard the Einhorns were planning to open a barbecue restaurant. "My reaction was, great, the more the merrier," says Brumbach. "Competition is good." But when he heard a rumor about the name, he sought legal counsel. They ran a trademark search and found that two years earlier, in 1998, the Einhorns had registered an intent to use the name "Bone Daddy." Since 551 N. Ogden was the official name on the register at that time, Brumbach's attorney, Max Shaftal, checked directory assistance in May to see if "Bone Daddy" came up. It did. Shaftal immediately fired off a letter to the Einhorns, asking them not to use the name. The Einhorns didn't respond, so Shaftal contacted their lawyer.
"The first words are so similar," says Brumbach. "The same o sounds, they both end in e....The imagery is the same, the components of barbecue. It is so similar as to be almost identical." A trial date was set for early 2001, but Shaftal filed a motion for a preliminary injunction immediately to prevent the use of the name in signage, advertising, and merchandise until the case was settled. "Luckily we acted before they opened," says Shaftal.
Mitch Einhorn says he's never tried to do anything behind anyone's back, and went so far as to file a Federal Trademark Reservation as early as 1998, shortly after he formally claimed the "Twisted Spoke" name, which he'd heard might be in use in other parts of the country. The idea of opening a barbecue restaurant was percolating as well, so he reserved "Bone Daddy" for future use. The name came from a scene from the movie The Nightmare Before Christmas, in which a goateed bongo player asks Jack Skellington, "What's up, bone daddy?" At the hearing Mitch said that he and Cliff had considered the similarity between their name and that of Brumbach's restaurant, but didn't think it presented a problem.
Both restaurants have been pioneers in their respective corners of town. Today, Division between Ashland and Western bustles with trendy restaurants like Mirai Sushi, Mas, and Rambutan, but just four or five years ago it was a stretch of ethnic bakeries, bars, and currency exchanges. Smoke Daddy and Leo's Lunchroom were just about the only restaurants locals had to choose from.
"I wanted to find a unique name that would identify us," said Brumbach at the first hearing. The inspiration for the Smoke Daddy name came from two of Brumbach's favorite pastimes: playing blues music and watching drag racing. He'd always been smitten with the song "Smokestack Lightnin'," by Chicago blues man Howlin' Wolf, and a drag racer who went by the nickname "Big Daddy" provided the second half of the name. On August 26, 1994, Brumbach opened the doors with just 42 seats, a small stage in a front window for live music, and a single, square, red smoker in the kitchen that churned out ribs, chicken, and pulled pork. "It was rough. We had to build it," he says.
The restaurant made just a few thousand dollars the first year, but favorable reviews in the Tribune, the Sun-Times, and some in-flight magazines helped establish Smoke Daddy's reputation. By the beginning of this year, business was steady enough that Brumbach decided to stop buying print advertising. At the hearing he said he has been relying on good press, free matchbooks, and postcards to maintain a high profile.
The Einhorns are relative newcomers to the barbecue business, but have been lifelong fans. Trips to the annual "Memphis in May" festival--a barbecue competition that draws participants from all over the country--as well as some tinkering in the Twisted Spoke kitchen, have taught them about the regional differences in the art of slow-cooking meat. When they opened the 28-seat restaurant in 1995, they served a limited menu of bar snacks and hefty, messy burgers and sandwiches, pork butt and barbecued chicken among them. The food quickly became the star. The "Fatboy" burgers won several local "best of" awards, and in 1998 the Einhorns decided to expand. That winter they ripped out the walls, built a new 50-seat dining room, and installed a 70-seat roof garden on top of it all.
The Einhorns call the Spoke a "family biker bar." As you approach the corner of Grand and Ogden--the center of an increasingly revitalized industrial corridor--the bar's mascot, a skeleton riding high atop a spinning antique motorcycle, is instantly visible. Four bikes are buried in a planter box at the restaurant's corner, rear wheels firmly embedded in the ground, front wheels reaching straight up like shrubs. A giant full-color mural on the Ogden side of the building depicts a group of riders out on the open road, Twisted Spoke logos visible on the backs of their jackets. But despite all this flag-waving, the place is a far cry from Easy Rider. Patrons include families, young couples with pets in tow, and cell phone users yapping away. Since the renovation they've done a booming business, especially in the summer months when the rooftop garden is open.
The Einhorns have fed their success with an irreverent marketing plan. Print ads proclaim "We're All Forked Up!" in reference to the rating (four out of four forks) the restaurant received from the Tribune. Then there's the "Smut 'n' Eggs" campaign, which refers to the bar's long-standing practice of pairing 70s porn movies on video with a breakfast service late on Saturday night. The Einhorns also have a plan for a "Bone Daddy" line of rubs, sauces, house bourbons, and merchandise, and a marketing campaign featuring a pig with, in Judge Bucklo's words, "a cigar and a large dose of attitude decked out in pin-striped suit and hat." The pig would be paired with slogans like "Ribbed for your pleasure" and "Man, I boned a lot of pigs."
Bucklo's opinion draws attention to the similarities in the words "smoke" and "bone," noting that "the first words are both important parts of the barbecue process and evoke the same imagery of slow cooked, smoked barbecue, usually ribs on the bone. The names, taken as a whole, sound remarkably similar and conjure up the same images.
"Smoke Daddy," she continues, "may be tied to the Twisted Spoke, as well, which may hurt its reputation due to the pornographic films displayed in the 'family biker bar.'" Furthermore, while the distinction between River West and Wicker Park may be significant in real estate terms, the proximity of the two restaurants makes customer confusion likely. "They draw customers from the same area," writes Bucklo, "and pull those outside the area into the neighborhood. Although a careful patron might look up the address, write it down, and follow directions, some others might hop in the car or a cab and wing it--perhaps to the wrong restaurant."
"There needs to be evidence of confusion," says Kevin Tottis, the Einhorns' attorney. "Before you bar a competitor from entering the market, you'd better have a very strong reason in court....No surveys have been done to show that." Tottis says that by granting the preliminary injunction, the judge has in effect granted Brumbach the relief that he would get at the end of the trial if he wins. "It's unrealistic to open a restaurant under a different name, run it for seven or eight months, then change it back if we win in court," says Tottis. He filed a motion for a stay of the preliminary injunction pending their appeal, which would have temporarily lifted the order and allow his clients to use the name. Bucklo denied the stay in mid-September, but Tottis is encouraged by the fact that the court has agreed to expedite the appeal process. Instead of waiting up to six months, both sides will have a chance to begin arguments the first week of November.
"Our position hasn't changed," says Shaftal. "We just want them to pick a different name. There's no requirement that a survey be done to determine confusion."
Mitch Einhorn says he's not about to give up on the "Bone Daddy" name. Because of the legal bills and the mounting costs of operating a new restaurant, he says he felt compelled to open up--without a name--just to start getting some foot traffic. "We have no choice," he says. "The first mortgage payment is due soon, and I can't just wait until all of this blows over. We've got to start getting the word out, even if it means we're only open for lunch and we give people half-price construction specials."
At 551 N. Ogden, the trademarked cigar-chomping pig still makes an appearance on all of the printed materials. A note saying "Our name is still under construction" is plastered over what clearly was supposed to say "Bone Daddy," and Mitch is even more clearly frustrated. "I just don't understand what he's doing," he says plaintively. "I don't see how we could possibly be in competition with each other. I've even offered to print on the menus that this is in no way connected to Smoke Daddy." When asked why he doesn't change the name to something else and avoid the mounting legal expenses, Mitch just says he's got "too much time, effort, and money tied up in the marketing plan" to quit now.
Once the appeals process is over in November, both sides could still face the prospect of a trial next July. If the appeal is denied, the Einhorns will have to operate under a different name until then. "This is not what most people do," says Brumbach's attorney. "There would have been points along the way where I thought we could settle, but for whatever reason, they didn't. I wouldn't be surprised if they didn't want to settle. It's become very emotional for them."
Art accompanying story in printed newspaper (not available in this archive): photos/Nathan Mandell.