NYC Restaurant Scene Extends to Newark In Concurrent Use Trademark Case

by Foley Hoag LLP - Trademark, Copyright & Unfair Competition

BNB1The matter of Terra Sul Corp. v. Boi Na Braza, Inc. involved a concurrent use proceeding between two restaurants over their nearly identical names. In theory, the scope of the conflict was nationwide, but in reality, as one party it, “[t]his dispute has always been about New York City.”  In a recent precedential opinion, the TTAB concluded that, because the “New York restaurant scene’s embrace is sufficiently broad to reach Newark,” a New Jersey restaurant’s area of concurrent use included New York City and, by extension, New York State.

Steer Over Embers

In 1996, a company called Terra Sul opened a Brazilian restaurant in Newark, New Jersey called “Churrascaria Boi Na Brasa.” “Churrascaria” means “steakhouse” in Portuguese and “Boi Na Brasa” is a Brazilian expression meaning “steer over embers.”  Terra Sul advertised the restaurant in media which may have reached New York City, and once catered a private party there, but engaged in no targeted promotion aimed at the city or anywhere else outside New Jersey. Terra Sul did not seek to register its mark with the PTO.

CaptureAnother company, Boi Na Braza Inc. (BNB), incorporated in 1999 and used the name “Boi Na Braza” in connection with restaurants in Dallas, Cincinnati and Atlanta. In 2002, BNB registered the mark for restaurant services (Class 42), without opposition and without any geographical restrictions.

Apparently, the two companies didn’t know about each other until 2007, when Terra Sul petitioned for cancellation of BNB’s registration.  Because Terra Sul was able to prove its priority of use, BNB’s geographically unrestricted mark was ordered canceled.

The Concurrent Use Proceeding

In 2009, BNB attempted to register its name again, this time as a geographically restricted mark, claiming the entire United States except for the state of New Jersey.  Terra Sul opposed on the grounds that it had also used the mark in “New York and elsewhere,” and asked that BNB’s registration be denied altogether or restricted to Texas, Ohio and Georgia, where its restaurants were located.

The TTAB conducted a concurrent use proceeding pursuant to 15 U.S.C. 1052(d).  The TTAB first considered whether the conditions precedent for concurrent registration were present, namely that (1) the parties are presently entitled to concurrently use the mark; and (2) there is no likelihood of confusion.  The first condition was met because the concurrent use by BNB had begun in good faith prior to any filing by Terra Sul. Second, there was no likelihood of confusion because of the geographic separation between the restaurants and the fact that there had already been 15 years of coexistence without actual confusion.

Geographic Restriction Ruling

Because the conditions precedent for concurrent use registration existed, the TTAB next considered “the appropriate geographic restriction, that is, the territory to which each party is entitled.”  Normally, the TTAB wrote, a senior user is presumptively entitled to registration covering the entire country, limited only by the junior user’s actual area of use and natural area of expansion.  However, this presumption can be overcome where — as here — the senior user remains static and the junior user was the first to file for registration.  Therefore, BNB, the junior user, was entitled to register its mark throughout the United States except in Terra Sul’s territory.

But that still left the question of how to define Terra Sul’s territory.  Did it include New York or just New Jersey? Neither party could produce evidence of concrete plans to open a restaurant in New York, but both wanted the territory to be available to them.  Ultimately, Terra Sul was able to show that some of its restaurant customers live in New York, and that it once won “Best Choice Churrascaria” in a newspaper’s “Best of NYC” awards. Based on this evidence, the TTAB found that “Newark, while not contiguous, is a neighbor near enough to draw New York City diners.” Thus New York was added to New Jersey to comprise Terra Sul’s concurrent use area.

Incidentally, according to Trip Advisor, both restaurants are delicious.



DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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