Is it possible to own the rights to the word 'picnic'?

Austin-based butter coffee maker and restaurant operator Picnik thinks so, and it is suing to prove it.

In a lawsuit filed in U.S. District Court for the Western District of Texas, Picnik accuses Austin-based restaurant Bento Picnic of trademark infringement and unfair competition.

According to the complaint, Bento Picnic's "unauthorized use of Bento Picnic has and is likely to cause confusion, to cause mistake, and/or to deceive customers and potential customers of the parties."

Picnik opened in 2013 in a food trailer on South Lamar Boulevard, serving gluten-free grab-and-go breakfast and lunch items as well as butter coffee and bone broth. In 2016, Picnik opened a flagship restaurant on Burnet Road, and today runs two food trailers in South Austin and operates a cafe inside of a Whole Foods 365 store in Upland, Calif., according to the lawsuit.

In addition, Picnik sells a line of bottled butter coffee drinks and butter coffee creamers at retail outlets including Whole Foods and Costco and online.

Last year, Picnik raised $7.5 million from private equity firm KarpReilly to grow both its consumer packaged goods and its cafe businesses.

Bento Picnic, meanwhile, was founded by Leanne Valenti in 2015 and began by selling health-oriented Japanese bento boxes at the Texas Farmers' Market at Austin's Mueller development, as well as online and through a delivery service.

A year ago, Valenti opened a brick-and-mortar Bento Picnic location at 2600 E. Cesar Chavez St., which serves bento boxes as well as grab-and-go meals, curry bowls and soup.

"I've been developing this idea since I was in Japan in 2011," Valenti said in an interview. "We had bento boxes as a picnic in the park and I had an a-ha moment. It was like a gift and it was something I wanted other people to experience."

Valenti said she decided on the name Bento Picnic in 2014 and purchased the internet domain name. "I made sure no one was using bento and picnic together first," she said.

"Picnik sent me a cease and desist in July 2018 and filed a trademark lawsuit against me in October 2018," she said. "The dispute is centered around my use of the word 'picnic' which is a generic word that describes food being eaten outside. My take on Japanese-style 'bento picnic' is very unique from their concept, and I began my business without being aware of their existence."

In the lawsuit, Picnik alleges that the two businesses are in fact very similar. According to the lawsuit, Bento Picnic markets itself to the same clientele as Picnik, it has served similar products such as blondies, guacamole and crudite’, curry, chocolate chip cookies and coffee, and it has a similar logo. In addition, "The words "picnic" and "picnik" are pronounced identically," the lawsuit says.

"There have been several instances of actual confusion to (Picnik), including from a food vendor, Brothers Produce, as well as instances communicated to (Picnik's) employees by (Bento Picnic's) employees," the suit said.

Picnik founder Naomi Seifter said the company does not comment on pending litigation.

Valenti's attorney, Roger Williams, said Bento Picnic and Valenti have filed a motion for summary judgment, which could result in Judge Robert Pitman dismissing the case.



Picknik filed a written response to the motion on Wednesday, and now Pitman will decide whether to dismiss the case or proceed to trial.

In the meantime, Valenti said she plans to keep operating Bento Picnic as is.

"This lawsuit has presented me with incredible hardship in my first year of operating the restaurant," she said. "My intention is to do everything I can to keep them from bullying me out of business with their ability to outspend me."