Trademark expiration a symbolic end to Firehouse Subs lawsuit against Myrtle Beach area eatery

dwren@thesunnews.comNovember 21, 2012 

— Firehouse Subs’ trademark on the word “firehouse” expired Wednesday and will not be renewed under a court-approved settlement agreement, bringing a symbolic end to a long-running legal battle between the national fast food restaurant chain and the former Horry County firefighter who owns Calli Baker’s Firehouse Bar & Grill near Briarcliffe Acres.

Calli Baker’s owner Heath Scurfield, who retired from the county’s fire department this year because of an injury, said he is not allowed to comment on a settlement agreement he reached with Firehouse Subs but is “looking forward to moving on to the next chapter of my life.”

Firehouse Subs sued Scurfield in 2009, accusing him of trademark infringement because he used the word “firehouse” in his restaurant’s name. Firehouse Subs claimed it was the nation’s only dining establishment allowed to use that word. Scurfield fought the lawsuit by stating in court documents that “firehouse” is a generic term and cannot be trademarked. A jury agreed with Scurfield in 2011, finding Firehouse Subs guilty of trademark fraud.

The restaurant chain appealed the jury’s verdict and both sides eventually signed a confidential settlement agreement that took effect when federal Judge Bryan Harwell vacated the jury’s original verdict.

Firehouse Subs, as part of the settlement agreement, said it will never renew its trademark on the word “firehouse,” which means the restaurant chain will lose its trademark to cancellation following Wednesday’s expiration.

The U.S. Patent and Trademark Office registers trademarks for a 10-year period, however, the owner of the trademark must file an affidavit between the fifth and sixth years of that decade-long period stating that the trademark is still in use. If such an affidavit is not filed within that time period, the federal agency will cancel the trademark. Firehouse Subs did not file its affidavit during the allowed time period.

Don Fox – chief executive of Firehouse of America LLC, the national chain’s parent company – told The Sun News last year that the company would no longer fight Scurfield’s use of the word “firehouse” at his restaurant.

“Heath will be able to operate as he has been,” Fox said. “We have no problem with that and we wish him well.”

Scurfield’s legal troubles began in June 2008, when Firehouse Subs sent him a cease-and-desist letter demanding that he remove the word “firehouse” from his restaurant’s name. Scurfield, who bought Calli Baker’s in 2005, said he decided to fight the restaurant chain’s threatened legal action because of the cost involved in changing his signage and because there is no similarity between his restaurant and Firehouse Subs other than a firehouse theme.

Calli Baker’s is a stand-alone, full-service restaurant with lunch and dinner entrees, a bar, catering services and events such as karaoke nights. Firehouse Subs is a fast-food type restaurant typically located in shopping centers and features sandwiches and a self-seating environment where customers typically clear their own tables.

Despite the differences, Firehouse Subs claimed in its lawsuit that customers might confuse Calli Baker’s as being affiliated with the national restaurant chain, which has more than 450 locations and annual sales topping $235 million.

Contact DAVID WREN at 626-0281.

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