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After NFL trademark issue, Açaí business changes name to grow

Co-owners Jim Kalomiris and Jason Mazzarone on Aug.

Co-owners Jim Kalomiris and Jason Mazzarone on Aug. 25, 2017 inside their SoBol store in Sayville, which serves acai bowls topped with fresh fruit and homemade granola. Photo Credit: Joseph D. Sullivan

Almost two years after starting SoBol, the founders of the açaí bowl business learned a critical lesson as they looked to expand and franchise their brand throughout Long Island and beyond.

Co-founders Jason Mazzarone, 32, and Jim Kalomiris, 53, both of Sayville, made the decision to change their brand name from Long Island Super Bowls to SoBol because they found out the NFL has a trademark on the words “Super Bowl.”

“When we franchised the business we were advised that there could be repercussions and that we should change the name before there were any issues,” Mazzarone said. “It was really sad. It was not something we wanted to do.”

But, he said, “we’ve used the new brand and name change to reengage with our customers.”

Bohemia-based SoBol sells açaí (pronounced ah-sah-ee) bowls topped with fresh fruit and homemade granola. Açaí berries are dark-purple fruits, similar to cranberries and blueberries.

“We weren’t trying to copy anything,” Mazzarone said. “Açaí is a super fruit that is super good and we put it in a bowl. Obviously, it rolled off the tongue.”

The NFL is known for keeping tight control over the trademarked words “Super Bowl,” including threatening and pursuing legal action, which is why many advertisers call it “the Big Game.” The NFL trademarked the phrase “Super Bowl” in 1969 to protect its exclusive right to use the term.

Although Mazzarone and Kalomiris “didn’t run into any issues, the reality is as you expand your brand, we just thought that the name couldn’t have the name Super Bowl,” said Steve Beagelman, CEO of SMB Franchise Advisors, which was hired by SoBol to get the company franchised. “We never had an issue with the Super Bowl or the NFL.”

NFL’s hold on Super Bowl

About 100 companies have licensing agreements giving them the right to produce merchandise bearing the logos of NFL teams and events, such as the Super Bowl. In addition, there are 30 NFL sponsors who have permission to use the term, including Bud Light, Gatorade, Papa John’s, Doritos, Verizon, and Visa.

“We extend rights to use the Super Bowl and NFL marks to our national league sponsors who pay a sponsorship fee to be affiliated with the league and its events,” said NFL spokesman Brian McCarthy, adding he did not have “any information” about SoBol.

Mazzarone discovered the açaí bowl as a surfer and student of the San Diego Culinary Institute in 2011. He brought the West Coast trend to Long Island when he first set up shop in 2012 at his family’s Italian ice business, Poppa Mia’s Ice House in West Sayville.

Soon after, he teamed with Kalomiris, a longtime family friend with more than 20 years of experience in restaurant management, real estate and construction.

“Açaí is a delicious, new niche in the quick-service food industry,” Mazzarone said. “It is really sweeping the nation; [it’s] exciting to be a part of it.”

The partners opened an 1,100-square-foot store in Sayville in November 2014, after investing $60,000. They opened a 450-square-foot store in Patchogue in May 2016.

“Every other day when we were working in the store we heard, ‘Are you a franchise?’ ” Kalomiris said. “A customer of ours approached us and said, ‘You guys should be franchising. I know someone who franchises companies.’ And then from there the rest is history.”

Since then, SoBol has grown steadily. Today, in addition to the two corporate stores, SoBol has six franchised stores and 26 more planned on Long Island and across the East Coast. SoBol employs more than 200 employees franchise-wide. The company declined to give its revenue.

After the name change,SoBol is now going through its own trademark process and is awaiting official approval.

“We had some pretty funky names come out before we settled on SoBol and . . . we certainly didn’t want to change the name again,” said Mazzarone, adding SoBol was inspired by the abbreviation SoCal, which stands for Southern California.

Trademark search important

Before starting a business, owners — especially those considering franchising, growing or selling their business — should conduct a countrywide trademark search and register their trademark with the U.S. Patent and Trademark Office, said attorney Tom O’Rourke of Bodner & O’Rourke in Melville.

O’Rourke warned that a search with the U.S. Trademark office would not cover state trademark registrations or “common law trademarks” that have not been registered but are in use. That’s why he advises business owners to hire a patent or trademark attorney to do a more extensive search. The service could cost from $1,500 to $4,000, he said.

To determine if two trademarks are confusingly similar, the U.S. Trademark office and courts look at whether names are spelled the same, look the same or sound the same, and if they refer to the same type of goods and services, O’Rourke said.

SoBol charges a franchise fee of $15,000 per location, plus a weekly 5 percent royalty from sales and a 1 percent marketing fee. In return, franchisees get training, equipment, supplies, and assistance with accounting and marketing.

One of the company’s franchisees is Stephanie Giglio, 27, who owns a SoBol in Rockville Centre that opened in April. She became interested in the franchise after first becoming a customer of the Sayville location, near her parents’ summer home. Shortly after investing $70,000 and opening the location, she moved from Manhattan to Rockville Centre to be closer to her business.

“I thought it was great opportunity to have my own business and have the guidance of a franchise,” said Giglio, who previously worked in sales and the fashion industry. “And I was already a customer, so I was familiar with the product.”

If franchisees face a financial loss or legal claim because the franchisor has not properly registered the franchise trademark or conducted a trademark search, franchisees could request that the franchise agreement be rescinded and that their money be refunded, said Ed Teixeira, chief operating officer for research firm FranchiseGrade.com, who lives in Stony Brook.

“It means that the franchisor would have to return all the money and pay damages,” Teixeira said.

Updating the signs

Some of SoBol’s franchisees, including the Rockville Centre location, had opened stores under the Long Island Super Bowls name, Mazzarone said. The signs of those stores will be changed by the end of the year and replaced with the new SoBol logos, he said.

“We just felt that it was in the company’s best interest to make the move now, but we don’t want to incur the expense onto our franchisees,” Mazzarone said.

On a recent Friday afternoon, the SoBol in Sayville was buzzing with customers. One of those customers was Cheryl Gross, of Sayville, who purchases açaí bowls from SoBol in Sayville about three times a week for lunch.

“I’m addicted to this place,” said Gross, a sales representative who often works out of her home office. The bowls are “healthy, they are filling and they’re always fresh.”

What SoBol offers

SoBol blends frozen açaí berries from Brazil, strawberries, bananas and soy milk to make a thick fruit smoothie. It layers the purple açaí puree with granola, and tops it with blueberries, strawberries, sliced bananas, shredded coconut and honey.

Açaí berries grow from the açaí palm tree native to tropical Central and South America. Açaí has been widely marketed as a “superfood” because it is high in antioxidants, fiber, calcium and vitamin A.

“Açaí bowls could be healthy, but they would be considered a dessert,” said Laura Feldman, chief clinical dietician from Long Island Jewish Valley Stream Hospital. “Individually the ingredients are healthy, but all together it is more than enough sugar needed in one meal.”

To make açaí bowls healthier, Feldman recommends eating smaller portions, limiting high sugar toppings, adding natural peanut butter or chia seeds, and mixing vegetables such as spinach or kale into the açaí blend instead of bananas or apple juice.

“You certainly can’t have an açaí bowl seven days a week, three times a day,” said Mazzarone, adding his regular 16-ounce açaí bowl has about 425 calories, but has not been officially tested. “But it is a great alternative to add some natural nutrients and change your diet.”

At a Glance

Company: SoBol

Headquarters: Bohemia

Founded: 2014

Store locations: 8 with 26 planned

Employees: More than 200 franchise-wide

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