No Decision on Whether ‘Kati Roll' Is Generic

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By Anandashankar Mazumdar

Sept. 29 — Whether the term “kati roll” is a generic term in the United States for an Indian-style snack food or whether a Manhattan restaurant could claim trademark rights over the term could not be resolved without a trial, the U.S. District Court for the Southern District of New York ruled Sept. 25.

The ruling let stand a series of trademark and related claims by a restaurant chain that brought kati rolls to America from India a little over a decade ago against a recently established competitor.

The Kati Roll Co. will have to prove that a competing kati roll eatery mere blocks away illegitimately copied its restaurant decor, menu, and other items, and also that it can claim exclusive rights over the term “kati roll,” on the basis that the term was unknown in America before it opened its restaurants.

The kati roll is a Bengali street food that originated in Kolkata, India, in the 1930s and in its most general form is composed of a kabab—grilled chicken or mutton—wrapped in a piece of porota or flatbread. The term “kathi” is Bengali for “stick” and originally referred to bamboo skewers used for grilling.

The term “kati roll” has expanded to include any kind of Indian-style flatbread wrapped around a filling of some kind and has recently begun expanding globally through the Indian diaspora.

In 2002, the KatiRoll Co. began opening quick-service restaurants in London and New York sharing decor based on a white-and-orange color scheme. In 2007, KatiRoll registered the term “The Kati Roll Company” as a service mark in the United States.

In 2014, Kati Junction Inc., employing some former KatiRoll employees, opened a competing kati roll restaurant three blocks from one of KatiRoll's Manhattan locations.

KatiRoll sued Kati Junction, alleging that Kati Junction had infringed its trade dress by copying the color scheme of its restaurant, employee uniforms and menus, as well as its general layout, and the order of food items listed on the menu—“the same thirteen rolls in the same order,” as noted by the court.

KatiRoll also asserted exclusive rights over the use of the term “kati roll” in the United States and also brought claims of trademark infringement, trade secrets misappropriation and unfair competition. Kati Junction moved for summary judgment on KatiRoll's claims.

The court ruled that KatiRoll's registered trademark “The Kati Roll Company” was not generic, but did not decide whether Kati Junction was free to call its own food items “kati rolls.”

Two Pesos v. Taco Cabana, 505 U.S. 763, 23 U.S.P.Q.2d 1081 (1992), held that “the shape and general appearance of the exterior of the restaurant, the identifying sign, the interior kitchen floor plan, the decor, the menu, the equipment used to serve food, the servers' uniforms and other features reflecting the total image of the restaurant” might be elements of protectable trade dress.

There were enough outstanding questions of material fact that prevented any award of summary judgment on the claims, the court said.

Thus, KatiRoll would get the opportunity to prove that it had enforceable trade dress rights and that Kati Junction had infringed such trade dress, as well as whether Kati Junction had stolen any trade secrets.

The court's ruling was issued by Judge Shira A. Scheindlin.

KatiRoll was represented by Elizabeth Shieldkret of Forest Hills, N.Y. Kati Junction was represented by Kalpana Nagampalli of the Feldman Law Group P.C., New York.

To contact the reporter on this story: Anandashankar Mazumdar in Washington at amazumdar@bna.com

To contact the editor responsible for this story: Mike Wilczek in Washington at mwilczek@bna.com

Text is available at: http://www.bloomberglaw.com/public/document/The_KatiRoll_Co_v_Kati_Junction_Inc_No_14cv1750_SAS_2015_BL_31157