Wednesday, July 19, 2017

TTAB Okays Concurrent Use Agreement Regarding FRASCA for Restaurant Services

Accepting an agreement reached by the parties, the TTAB found that applicant Frasca Food and Wine (FFW) is entitled to a concurrent use registration for the mark FRASCA for bar and restaurant services, covering the entire United States except for the states of Illinois, Indiana, and Michigan. It ordered that Registrant's prior registration be geographically restricted to those three states. Frasca Food and Wine, Inc. v. Dunlay's Rocsoe, LLC Concurrent Use No. 94002752 (July 14, 2017) [not precedential] (Opinion by Judge Lorelei Ritchie).

The Concurrent Use Agreement (dated March 10, 2016) stated that FFW has used the mark FRASCA in Boulder, Colorado, since July 2004. FFW applied to register the mark, limited geographically, in May 2016, naming Dunlay's as an excepted user.

Registrant Dunlay's had registered the mark FRASCA in January 2011, claiming a first use date of May 17, 2006 for its Chicago restaurant.

The Board commenced this concurrent use proceeding on June 29, 2017. It then suspended the proceeding, reviewed the Concurrent Use Agreement, and found it acceptable. The parties agreed and stated that there have been no incidents of confusion in ten years of co-existence, and that they operate substantially different restaurants, offer substantially different products at different price points, and market to different consumers through separate trade channels." They agreed not to use the mark in the other's territory. And they addressed the issue of "overlapping market activities," avoid confusion, and address and resolve any issues that arise

Concurrent use agreements that include information as to why the parties believe confusion is unlikely, evidencing the parties’ business-driven belief that there is no likelihood of confusion,and providing provisions to avoid any potential confusion, are entitled to great weight in favor of a finding that confusion is not likely. In re Four Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed. Cir. 1993); Bongrain Int’l (Am.) Corp. v. Delice de France Inc., 811 F.2d 1479, 1 USPQ2d 1775 (Fed. Cir. 1987).

And so each party will end up with a geographically-restricted registration for FRASCA.

Read comments and post your comment here.

TTABlog comment: Since Dunlay's registration reached its fifth anniversary in January 2016, wasn't it immune to a Section 2(d) challenge by a prior user? See Sections 15 and 33(b)(5) of the Trademark Act.

Text Copyright John L. Welch 2017.


At 10:45 AM, Anonymous Laura Day said...

I was thinking it would not be time barred because a restriction (whether as to goods services or geographically) is an equitable claim for relief under Section 18 --

"Relief under Trademark Act § 18, 15 U.S.C. § 1068, may be sought separately and apart from, or in addition to, any other ground.3 A claim under Trademark Act § 18, 15 U.S.C. § 1068, is in the nature of an equitable remedy and does not require pleading and proof of specific grounds for cancellation or opposition, such as abandonment"

309.03(d) Remedy Under Trademark Act § 18, 15 U.S.C. § 1068, (Partial Opposition or Partial Cancellation), 2017 WL 2714401 [it also discusses concurrent use in this section]

As restated here, there is not a time restriction on the Board's ability to reform the registry:
"The Board made clear in Eurostar that “[t]he restriction provisions of Section 18 are in the nature of an equitable remedy …” and are available for registrations more than five years old because the usefulness of Section 18 would be severely undermined if the Board's power to limit the goods and services of a registration could be exercised only with respect to registrations less than five years old. Id. at 1271, fn. 3. The Board's clarification on this issue presented by cases involving the question of likelihood of confusion is in harmony with Trademark Act §§ 14(3) and 18 as confirmed by the legislative history. Section 18 expressly provides for a limited remedy notwithstanding the provisions of Section 14(3); that is, Section 18 speaks directly to the goods and services without a time bar."

Montecash LLC, 95 U.S.P.Q.2d 1060 (T.T.A.B. May 7, 2010)

At 1:00 PM, Blogger John L. Welch said...

I don't think Section 18 applies to geographical restrictions.


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