Trademark lawyers act reasonably; Bob finds happy home in Noodle World

In the world of intellectual property -- as in all areas of the law -- there is the law, and then there is the right and reasonable thing to do. Unfortunately the two are not always in sync. Which brings us to today's fascinating story in the LA Times about Noodle World, a Southern California pan-Asian mini chain.

Thai-American John Mekpongsatorn, a native of North Hollywood, was looking for a place to put his first restaurant. He happened across a space in the LA suburb of Alhambra that formerly housed a branch of Bob's Big Boy, the quintessential Southern California burger joint famous for the statue of a fat kid named "Bob" holding a hamburger in front of every store.

What luck! Reports the Times, Mekpongsatorn "loved Bob's Big Boy as a child. He liked trying to reach up and touch the statue's hamburger when he wasn't quite tall enough." His childhood home of North Hollywood wasn't far from Bob's most famous branch, on Riverside Drive in Burbank, just over the border from NoHo, which still features carhop service on the weekends. (Coincidentally, I once worked on a copyright case involving a scene of a documentary filmed at the Burbank Bob's.)

So Mekpongsatorn bought the building, opened up his Noodle World, and things were proceeding just fine. Until he had the idea of putting in a Bob's statue, as an homage to the building's former occupant, and as a way to give a bit of comfort to those Alhambra old-timers who "could not accept that the ketchup and mustard on the tables were gone, replaced with chili oil and jalapeno-spiked vinegar":

Mekpongsatorn stumbled upon a slightly smaller Bob's Big Boy statue at the Rose Bowl Flea Market. Perhaps this would do the trick, he thought, and reach out to those who felt left out as the community changed. He paid $200 and lugged it onto his pickup truck. It was installed above a divider between the kitchen and the dining room.

The chubby figure was a hit. People heard about it through the neighborhood grapevine, as one old-timer told another that a Big Boy statue had taken up residence inside the noodle house.

Mekpongsatorn started seeing more whites and Latinos venture in.

"The families started coming back," Mekpongsatorn said.

Well, you know what's coming next. "We demand that you immediately cease and desist your use of the character and words," said the letter from Bob's corporate headquarters. Mekpongsatorn immediately complied. But his customers revolted:

"The next week, there was madness," he said. "I had so many people say, 'Where's the statue? My kid wants to see the statue.' Then people would come up to me and tell me how their aunt used to work at the Big Boy's and how they used to take their son's basketball team to the Big Boy's. It was all these stories about how the restaurant was a pillar. I had to get the statue back."

So Mekpongsatorn wrote back to the suits at Bob's, told his tale, and asked for a break. And he got one! Responded Bob's in a letter: "In light of your personal history with Big Boy, we would be willing to offer you a license agreement to allow for your continued use of the Big Boy statue. The fee under the license agreement would be $1 per year." And so Bob returned to his place of honor.

Strictly speaking, as a trademark matter, Bob's probably did have a strong case to demand removal of the Bob statue, which could suggest some endorsement of or affiliation with Noodle World by Bob's. The Times even cites evidence of some actual confusion (at least of the "initial interest confusion" variety): "I remember older ladies coming in thinking it was still a Bob's Big Boy, putting the menu down and asking, 'What's going on here? They'd get up and walk out." But Bob's wisely realized that Mekpongsator's use of the Bob statue caused it no harm, and probably even engendered a bit of goodwill. So kudos to them for doing the right thing.

Now if Noodle World would only bring me my tom yum by carhop, I'd be a regular...

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