Thursday, August 27, 2009

TTAB Accepts "BIG BOY" Restaurants Concurrent Use Agreement

The Board accepted the concurrent use agreement (found here) entered into by the parties in Frisch's Restaurants, Inc. v. Big Boy Restaurants International, LLC, Concurrent Use No. 94002189 (August 11, 2009). It ruled that Applicant Frisch's Restaurants is entitled to registration of the mark BIG BOY for "tartar sauce and pies" and for "restaurant, drive through and carryout services" for the states of Indiana and Kentucky, and for certain counties in Tennessee and Ohio. And it ordered that 16 registrations owned by Big Boy Restaurants International be restricted to the rest of the United States.

The Board observed that "while stipulated agreements are not binding on the Board, there can be no better assurance of the absence of a likelihood of confusion, mistake, or deception than the parties' careful consideration of their commercial interests."

By the consented motion and agreement, the parties inform the Board that registrant expressly consented to applicant's concurrent use application; that neither party will use or advertise its marks in the other party's territory; that applicant will always display the name "Frisch's" in close proximity to each display of its mark on packaging, in marketing materials and displays, and in signage in applicant's territory; that the parties do not believe that there is a likelihood of confusion caused by the parties' respective uses of their marks; that the parties do not know of any instances of actual confusion caused by the parties' respective uses of their marks to date; and that the parties' entry into various agreements, including the earlier agreements executed in 2001, will minimize or eliminate the possibility of any confusion that might otherwise be caused by the parties' respective uses of their marks.

TTABlog note: The Wikipedia version of the BIG BOY story may be found here. As to not advertising in the other party's territory, I guess websites don't count as advertising.

TTABlog Postscript: Another concurrent use agreement was approved by the Board yesterday in Beach Mart, Inc. v. Beach Mart, Inc., Concurrent Use No. 94002100 (August 26, 2009).

Text Copyright John L. Welch 2009.


At 12:34 PM, Anonymous Dave Purdue said...

Very interesting. Here in Ohio, another Frisch's case (Frisch's Restaurants, Inc. v. Elby's Big Boy of Steubenville, Inc. 670 F.2d 642, at 648 (6th Cir.1982)), is our seminal case for likeliehood of confusion factors. In that case, one of the factors regarding confusion involved radio advertising that seeped across the Ohio River. Twenty seven years later, as you point out, John, it must be that web sites don't count as advertising (at least not as much as radio ads).
It seems to me that the Internet is an elephant in the room that doesn't get mentioned in many of today's trademark decisions.
Anyway, back in 1982, the parties could not agree so it's nice to see that they have figured out how to co-exist. I think it is good for the Board to give deference to what the "Big Boys" have decided about their co-existence. As a consequence, their geographic interfaces can be reflected in concurrent use registrations and vice-versa.
Now, if only Frisch's could figure out how to keep kids from taking those cherubic Big Boy statues and putting them in odd places. Ah..... life in the big city.

At 7:25 AM, Anonymous Paul Reidl said...

It seems to me that when two businesses say that the agreement between them, with whatever conditions they deem appropriate, will reduce likely confusion to acceptable levels, then that agreement should receive great deference from the PTO and the TTAB. Who knows better about likely consumer reaction: the parties in the business or the folks in Washington? Will there be spillover here? Sure. Is some confusion likely? Sure. Is that likely to present a genuine problem? Probably not, at least according to the folks whose businesses would be affected.


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