Concurrent Use Applicant Carves Out Utah For Its Restaurant Services

Concurrent Use Applicant El Taco Grande applied to register the mark shown below left, for "fast-food restaurants and take-out restaurant services," naming Registrant I-20, owner of the mark shown below right for "restaurant services," as an excepted user. Registrant feebly argued that Applicant could not prove use prior to the filing date of Registrant's underlying application, and in any event that any concurrent use registration issued to applicant should be limited to the Salt Lake City area. The Board ruled that applicant was entitled to a concurrent use registration for the entire state of Utah. El Taco Grande Mexican Food, LLC v.I-20 Hospitality, LP, Concurrent Use No. 94002497 (October 19, 2015) [not precedential].

El Grande Taco LLC was established in 2002 as the successor to a family business operated under that name since 1997. The husband remained the sole owners of the LLC. It operates restaurants in ten Utah locations, several falling beyond a 50-mile radius from Salt Lake City that Registrant proposed.

Registrant I-20 operates its restaurants only in the state of Texas. Its involved registration issue from an application filed on November 16, 2000.

As the applicant/plaintiff, El Taco Grande bears the burden of proof in this proceeding. It must satisfy the two conditions precedent to issuance of a concurrent use registration: (1) that its lawful concurrent use of the mark began prior to the filing date of registrant's underlying application; and (2) that confusion, mistake or deception is not likely to result from its continued use of its mark in its claimed territory.

First Condition - Lawful Concurrent Use: As to the first, primarily jurisdictional, factor, the only issue was whether El Taco Grande could rely on use of the mark by the predecessor family business from 1997 to 2002. The Board had no trouble concluding that El Taco Grande may claim a first use date in 1997. Registrant did not contest the good faith nature of the adoption of applicant's mark in 1997.

Second Condition - No Likelihood of Confusion: There was no argument that the involved marks would not likely cause confusion if used in the same geographic area. The disputed issue was whether a geographic restriction would eliminate the likelihood of confusion, and if so, what the appropriate boundaries for the restriction should be.

El Taco Grande wanted the entire state of Utah. I-20 wanted a restriction to the Salt Lake City metropolitan area, although acknowledging that applicant operated at least one restaurant outside that area. El Taco Grande in turn maintained that several of its restaurants are located beyond that area.

The Board concluded that likelihood of confusion can be avoided with an appropriate geographical restriction. "El Taco Grande and I-20 offer their services in different, non-contiguous states. They do not overlap in the areas where they promote their respective marks and appear unlikely to draw the same customers."

The Board ruled that the appropriate restriction for El Taco Grande encompasses the entire state of Utah. The Board took judicial notice that four of applicant's locations are outside the Salt Lake City metropolitan area.

And so the Board found that El Taco Grande "should continue to be able to use its mark throughout the entire state of Utah."

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TTABlog comment: What happens if El Taco Grande opens a restaurant in California under its Beto's mark? Nothing, unless and until I-20 comes into the area. Think Dawn Donut and Whataburger.

Text Copyright John L. Welch 2015.