Why You Can’t Call It a Barcade

Shawn Thornton was a week away from opening his new business, Double Dragon Barcade, in Fort Wayne, Indiana, when the company’s Facebook page abruptly shut down. Alarmed that the business’s followers were suddenly lost to the ether, he reached out to the social-media platform to find out what was going on. Facebook moderators directed Thornton to an attorney for Brooklyn-based arcade bar chain Barcade; Thornton claims the lawyers informed him by phone that the company was just hours from filing a lawsuit against his fledgling arcade bar for trademark infringement. Thornton offered Barcade compensation for using the trademark, but was given a firm “no.” Facing the prospect of expensive legal fees, Thornton climbed up to the Double Dragon Barcade sign and slapped black duct tape over the “B.” From then on, the business would be referred to as Double Dragon Arcade — at least by its owners.

Nearly every arcade bar owner in the country (or reporter who has written about an arcade bar concept, for that matter) seems to have a story about an encounter with Barcade or its attorneys. Barcade was founded in 2004 and filed a trademark for the word — a portmanteau of “bar” and “arcade” — in 2007. The mark is considered incontestable, meaning that it’s been in use for at least five years, hasn’t been made generic, and is thus virtually immune to legal challenge. Since then, the company has registered roughly 35 trademarks total in the U.S. and abroad, including in Australia, Canada, China, and Korea. Every time the #barcade hashtag is used on social media, that, too, is infringing upon Barcade’s trademark.

As diligent as the company is at registering marks, it’s also become notorious for enforcing those trademark rights and aggressively rooting out unauthorized usages. Thornton says he was aware of other arcade bars around the country but hadn’t realized that the term “barcade” didn’t fall under fair use. “I thought it was just a standard word [for] a genre or a type of establishment, as you would explain a bar and grill,” he says. “I thought it was a generalization of the type of place that it was.” Other bar owners similarly claimed unawareness that the word “barcade” wasn’t part of the general lexicon. When Tom Hanson confirmed plans in January to open a taco bar and arcade called Taco Barcade in Duluth, Minnesota, the last thing he was expecting was an email from a Brooklyn-based arcade bar chain. “We didn’t really have any intention to infringe upon something,” he says, “but I assumed that the term barcade was common knowledge.”

The interaction with Barcade left a bad taste in Thornton’s mouth. “The biggest part was not being able to communicate with our potential customers that we had started building a rapport with already,” he says, noting that he had to build a new Facebook page and request that Barcade release the original page so the two could be merged. The process took roughly three weeks from the initial interaction with Barcade.

For its part, Barcade says that asking a business to change its name to “arcade bar,” “beercade,” or some other variation of the booze-and-gaming contraction is usually relatively painless. Brandon Carr, owner of Buffalo’s Quarter Restaurant & Bar, says he was contacted by Barcade representatives when he unveiled a new arcade bar wing called the Llama Lounge Barcade. Carr says in messages to Eater that the Quarter was unaware of the “barcade” trademark, but willingly made the changes. “They were very nice about it and I was very happy to respect it and make the changes promptly,” he writes.

Occasionally though, use of the word “barcade” does result in a lawsuit, as in the case of Kings, a bar and music venue in Raleigh, North Carolina. Kings Barcade originally opened in 1999, several years before Barcade debuted in Brooklyn. However, the original Kings was forced to shutter in 2007 to make way for a new parking deck on the property. Three years later, the business tried to make a comeback with its original name sans actual arcade games. Barcade — now in possession of the “barcade” trademark — filed a lawsuit forcing the bar to abandon use of the term. Kings ultimately agreed to settle. “Kings has not been using the term Barcade actively for many years, so it was really more of a legacy thing for us since the word did appear in our website address and in some social media,” co-owner Ben Barwick told Triangle Business Journal at the time.

According to Barcade’s owners, managing the name has become an equally big problem. “It’s one of the greatest things I’ve thought of and also just one of the biggest headaches I’ve ever gotten myself into,” says Barcade co-founder and CEO Paul Kermizian. He, alongside partners Kevin and Scott Beard and Pete Langway, came up with the name during a period when arcade bars were relatively uncommon. At the time, he recalls that there were only two businesses in the United States using the term as a descriptor. By 2007, both of those arcade bars had closed, opening the doors for Barcade to file a trademark.

Barcade didn’t plan to open so many locations (the company didn’t open a second arcade bar until 2011). Rather, Kermizian says he sought to trademark the moniker because its simplicity and descriptiveness was a key asset that needed to be protected. ”It tells you everything about your experience that you’re going to have at one of our locations, without having to really explain anything,” he says.

In the past several years, as the arcade bar trend has caught on nationwide, managing the trademark has become a huge effort on the part of the company. In 2018, the company dealt with 245 unique cases of trademark infringement ranging from arcade bars using the term in social-media posts to descriptions on websites and Facebook pages. The company now employs a full-time intellectual property support manager, whose job it is to contact businesses misusing the mark.

Nobody likes getting an email telling them they can’t use a specific word, and it’s not lost on Kermizian that some bar owners think Barcade is being unreasonable. Some, such as Rockafire Arcade Bar in Kansas City, Missouri, air their grievances with social-media posts denouncing lawsuits as “dull and boring” and sharing photos of Barcade’s cease-and-desist letters. “You should see some of the nastiness people send to [our intellectual property manager] in response to her polite initial email,” Kermizian says. Still, he says, it’s a slippery slope. If Barcade allows one business to use its mark, more will start to infringe.

“The problem for them is you have a duty to police your trademark,” says Joseph Mandour, a trademark attorney with Mandour & Associates who does not represent Barcade. “If you don’t, you lose trademark rights.” When a business files a trademark, Mandour explains, it has to ensure that no one else uses the mark. If many businesses are shown to be using the mark without Barcade intervening, that “genericizes” the term and makes it more difficult for Barcade’s attorneys to fight infringement in court. “The more unique your trademark is, the stronger it is, and the more valuable it is,” he says.

The original Barcade mark is registered under at least eight different classes (categories of products and services used by the U.S. Patent and Trademark Office to organize marks), ranging from restaurant services to business management to burgers to beer. Mandour notes that it’s also typically in the best interest of a new business to distance itself from a trademark holder like Barcade in the event that the new business wants to grow into multiple locations. Nobody benefits from a watered-down mark.

Camille Miller, an attorney with Cozen O’Connor, has worked with Barcade for more than a decade; over that time, she’s observed a significant increase in infringements. “Right now, it’s very trendy to have an arcade bar-themed restaurant,” she says. “So now, they’ve had to be more diligent and they’ve had to spend more money than I think they ever wanted or hoped to have to spend to enforce their trademark.”

When individuals fail to respond to messages and emails from Barcade, Miller steps in. If the individual misusing “barcade” still doesn’t respond, it can escalate to a lawsuit. “They kind of ignore a letter just hoping it’ll go away, and they don’t quite realize the seriousness of the issue until they get sued,” she says. Those cases are relatively rare, occurring roughly once or twice a year. According to Miller, the offending party nearly always settles quickly after speaking with a trademark attorney.

Hanson was somewhat fortunate. His nascent taqueria and arcade bar — now called Taco Arcada — only had to adjust its social-media presence and update its logo. Still, he wonders whether his small-town arcade bar really posed a threat to an arcade bar with locations in major metropolitan areas. “I don’t think in Duluth, Minnesota, one restaurant named barcade is going to do anything to them,” he says. “There’s different ways that people want to do business and they’re all legal probably, but I think they waste a lot of time and effort.”

Barcade, which is set to open four more locations over the next two years, obviously disagrees. “Sometimes we get people who are adamant about their geographic location and that there couldn’t be confusion because they’re in some small town in Missouri and we’re not anywhere near them,” Kermizian says. “If we let them slide because we’re not worried about this small town, then all of a sudden there’s 20 places like that.”

Back in Missouri, the Double Dragon has just marked its first anniversary. Thornton says the arcade bar is doing well despite the initial hiccup with Barcade; he hasn’t heard from Barcade since the incident. Despite removing the illicit term from his signage, menus, and social media, patrons still occasionally refer to the venue as a “barcade,” he says. “I can’t stop my customers from still calling us Double Dragon Barcade, but as long as I don’t promote it as ‘barcade,’ I’m free to go about business.”

Brenna Houck is editor of Eater Detroit and an Eater.com reporter.
Editor: Erin DeJesus