Back to the Weekly Home Page

Classifieds

Palo Alto Online

Milk shakes, grilled cheese and lawsuits

by Erik Wong

It will always be known as "The Creamery" to locals, no matter what its real name is. To landlord John Santana and restaurant leaseholder Robert Fischer, however, the precise name of the landmark restaurant, the Peninsula Fountain & Grill, is mixed up in new legal wrangling.

Fischer was recently slapped with a lawsuit by Santana after he opened a second Peninsula Fountain & Grill at the Stanford Shopping Center. The suit was filed Sept. 20 in San Jose federal court by Santana's Peninsula Creamery corporation, and names Fischer as the defendant.

Fischer leases the downtown Peninsula Fountain & Grill from Santana, whose family has owned the Peninsula Creamery on High Street for decades. Although "The Creamery" is often confused with Santana's dairy store, which sells sandwiches and ice cream "to go," the lawsuit points specifically to the Stanford Shopping Center restaurant, which opened in May, as the source of legal injury and damages.

According to his attorney Bob Yorio, Fischer maintains that he is free to use the name wherever he wants because of a section in a lease agreement that he and Santana signed in 1990. The section reads, "Lessee shall have the right to use the name 'Peninsula Fountain and Grill' during the term of this Lease."

"If Fischer is claiming the intent of the parties' agreement was to allow him to franchise the restaurant all across the U.S. just as long as he had a lease, then we respectfully disagree," said attorney Jeffrey Baruh, who is representing Santana and the Peninsula Creamery.

Talks between Fischer and Santana had been going on before the lawsuit was filed. According to Baruh, Santana repeatedly tried to meet with Fischer and discuss the opening of a second Peninsula Fountain & Grill at the shopping center. Baruh added that Fischer had casually brought up plans to open a shopping center restaurant, but did not say whether or not that restaurant would be another Peninsula Fountain & Grill.

"We were over-capacity in our downtown location," Fischer told the Weekly in October. "We stopped seeing regulars. They would tell us the lines are too long." According to Yorio, Fischer disputes Santana's selective licensing of the Peninsula Fountain & Grill name and logo.

"We dispute the claim that the Santana family is the exclusive owner of the name and logo," Yorio said. "Even if you did own it, the lease agreement says, 'Fischer will use the name during the term of the lease.'"

A source close to the Santana family has confirmed there is no dispute with Fischer at the downtown restaurant, nor does Santana truly seek money in exchange for subsequent uses of the name.

However, the suit does ask the court to order "disgorgement and three times the amount of defendant's profits derived form its infringement of plaintiff's trade name, trademark or servicemarks, good will, and Logo." Further, it seeks three times the amount of actual damages caused by similar infringement.

In addition to monetary damages yet to be determined by the court, Peninsula Creamery is claiming ownership of the "Fountain & Grill" name, and Santana wants to eliminate all infringing signage, menus and other marks of the Peninsula Fountain & Grill at Stanford Shopping Center. He wants to have the court declare the Creamery the exclusive owner of the trade names and trademarks "Peninsula," "Peninsula Creamery," "Peninsula Fountain and Grill," and the "Little Man" logo. Santana will also ask the court to invalidate Fischer's federal trademark registration of the name "Peninsula Fountain and Grill," which he obtained in May.

Fischer has filed a motion to dismiss the complaint, although Peninsula Creamery attorneys have yet to see the motion. Both sides remain firm in their claims and do not plan on settling.

E-mail Erik Wong at ewong@paweekly.com