
    Norden Restaurant Corporation, Respondent, v Sons of the Revolution in the State of New York, Appellant.
    Argued November 21, 1980;
    decided December 22, 1980
    
      POINTS OF COUNSEL
    
      William T. Livingston, III, for appellant.
    I. The court is requested to enforce the contract between the parties. (Backer Mgt. Corp. v Acme Quilting Co., 46 NY2d 211; Breed v Insurance Co. of North Amer., 46 NY2d 351; Sen-row Concession v Shelton Props., 10 NY2d 320; Spencer v VDO Instruments, 232 F Supp 735, 352 F2d 784; Janos v Peck, 21 AD2d 529, 15 NY2d 509; Sillman v Twentieth Century-Fox Film Corp., 3 NY2d 395; Dell Pub. Co. v Stanley Pub., 9 NY2d 126.) II. By accepting the benefit of the contract, plaintiff is estopped from disputing defendant’s ownership of the Fraunces Tavern name. (Farnsworth v Boro Oil & Gas Co., 216 NY 40; Tilyou v Reynolds, 108 NY 558; Hyatt v Dale Tile Mfg. Co., 106 NY 651, 125 US 46; Vernam v Smith, 15 NY 327; Lordi v County of Nassau, 20 AD2d 658; Stogop Realty Co. v Marie Antoinette Hotel Co., 217 App Div 555; Lenasa Realty Corp. v Liberty Public Market, 136 Mise 276; Distillerie Flli Ramazzotti, S.p.A. v Banfi Prods. Corp., 52 Mise 2d 593, 27 AD2d 905; Laurer Brewing Co. v Ehresman, 127 App Div 486; New York Trust Co. v Believe It Or Not, 12 Mise 2d 736.) III. The doctrine of “secondary meaning” has no application in this case. (Union Carbide Corp. v Ever-Ready, Inc., 531 F2d 366; Dell Pub. Co. v Stanley Pub., 9 NY2d 126; Geo. Washington Mint v Washington Mint, 349 F Supp 255; Pike v Ruby Foo’s Den of Md., 116 F Supp 336, 232 F2d 683; Golden City Rest. v Pike, 246 F2d 684; Allied Maintenance Corp. v Allied Mechanical Trades, 42 NY2d 538; Matter of Playland Holding Corp. v Playland Center, 1 NY2d 300.)
    
      Joseph D. De Salvo for respondent.
    I. The decision below is not affected by the lease agreement between the parties. (Pollard v Meyer, 61 AD2d 766.) II. Appellant’s argument relevant to estoppel is inapt and inapplicable. (Vernam v Smith, 15 NY 327; Tilyou v Reynolds, 108 NY 558; Distillerie Flli Ramazzotti, S.p.A. v Banfi Prods. Corp., 52 Misc 2d 593; New York Trust Co. v Believe It Or Not, 12 Misc 2d 736; Beer Nuts v King Nut Co., 477 F2d 326; Professional Golfers Assn. of Amer. v Bankers Life & Cas. Co., 514 F2d 665; Heaton Distr. Co. v Union Tank Car Co., 387 F2d 477; Stogop Realty Co. v Marie Antoinette Hotel Co., 217 App Div 555; Mark Realty Corp. v Hirsch, 180 App Div 549; Glen & Hall Mfg. Co. v Hall, 61 NY 226.) III. The court below properly applied the doctrine of secondary meaning by reason of the fact that the service mark “Fraunces Tavern” is not arbitrary or “inherently distinctive”. (President & Trustees of Colby Coll. v Colby College-New Hampshire, 374 F Supp 1141; Wyatt Earp Enterprises v Sackman, Inc., 157 F Supp 621; Volkswagenwerk AG. v Richard, 492 F2d 474; American Heritage Life Ins. Co. v Heritage Life Ins. Co., 494 F2d 3; United Drug Co. v Rectanus Co., 248 US 90.) IV. The subsequent grant of the certificate of registration for the service mark “Fraunces Tavern” for restaurant purposes makes summary judgment impossible.
   OPINION OF THE COURT

Meyer, J.

The sole question before us on this appeal is whether Special Term properly denied defendant’s motion for summary judgment on its third counterclaim, in which defendant sought to enjoin plaintiff “from using the name Fraunces Tavern, from using any name other than Fraunces Tavern Restaurant”. We hold that defendant is entitled to such injunctive relief.

Defendant owns the building at 54 Pearl Street in the Borough of Manhattan which has been known since the eighteenth century as “Fraunces Tavern”. The building has been designated a national landmark and is primarily known as the site where then General George Washington bade farewell to his officers at the close of the Revolutionary War.

The plaintiff is the tenant under a lease executed in 1977 which entitles it, subject to numerous restrictions, to conduct a restaurant business on the premises. Plaintiff asserts that the Norden family has conducted a restaurant business on the leased premises for over 40 years and that because of the lengthy association of their restaurant business with the name “Fraunces Tavern” that name has become synonymous with their restaurant and that they, therefore, have acquired the exclusive right to use the name.

This assertion is belied by several provisions of the lease to which they consented in 1977. Specifically, paragraph 3.04 of the lease provides as follows: “The business conducted by Tenant in the premises is only to be conducted under the name ‘Fraunces Tavern Restaurant’ or such other name as Landlord shall from time to time approve in writing pursuant to the request of Tenant.” Perhaps the clearest recognition of defendant’s ownership of the “Fraunces Tavern” appellation is contained in paragraph 40.01, which provided: “The right to use the name ‘Fraunces Tavern Restaurant’ in connection with Tenant’s business shall be limited to the restaurant business conducted in the premises and to no other business or location, and such right shall terminate upon the expiration or earlier termination of this Lease.”

Having recognized defendant’s ownership of the name “Fraunces Tavern Restaurant”, and having accepted the licensed use of the name upon the terms dictated by the defendant, plaintiff cannot now assert ownership of it as against defendant (see Stogop Realty Co. v Marie Antoinette Hotel Co., 217 App Div 555).

Nor is the plaintiff’s claim of ownership advanced by the fact that even as it negotiated the 1977 lease, it applied to the United States Patent and Trademark Office for registration of the name “Fraunces Tavern” as a service mark and subsequently obtained such registration. It is well established that registration is not dispositive of the common-law rights of ownership of the trade-mark (see Turner v HMH Pub. Co., 380 F2d 224, 228; United States Jaycees v San Francisco Jr. Chamber of Commerce, 354 F Supp 61, 70, affd 513 F2d 1226), but merely grants the registrant the procedural advantage of establishing prima facie ownership. The probative value of that registration is but slight in light of the facts that plaintiff applied for the service mark at a time when it was conceding in negotiation that defendant owned the name “Fraunces Tavern Restaurant”, and that the provisions of the lease negotiated clearly establish defendant’s ownership of the name.

Defendant was entitled to summary judgment on its third counterclaim. The order of the Appellate Division insofar as appealed from should, therefore, be reversed and the certified question answered in the negative.

Chief Judge Cooke and Judges Jasen, Gabrielli, Jones, Wachtler and Fuchsberg concur.

Order, insofar as appealed from, reversed, with costs, summary judgment granted to defendant on the third counterclaim, and question certified answered in the negative. 
      
       The only issue briefed before us is whether the order denying defendant’s motion for summary judgment on the third counterclaim was proper. Accordingly, we do not consider the propriety of so much of the Special Term order as denied defendant’s motion addressed to the second and fourth causes of action stated in plaintiff’s complaint.
     