Trademark Review - The Miners, Boi Na Braza and Pretzel Crisps (April 2014)

by Knobbe Martens

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Battle of the Miners

The University of Texas at El Paso (“UTEP”) has used the nickname MINERS since at least 1914.  UTEP, through its governing board, owns several registrations for the mark MINERS and a logo for various goods and services related to the college and its college sports teams, which do not include a baseball team.  

Southern Illinois Miners (“SIM”) is a professional baseball team that also calls itself “The Miners.”  UTEP opposed applications filed by SIM for the word mark MINERS and the logo mark shown below for goods and services related to its professional baseball team.

Federal Circuit Review - Battle of the Miners

Not surprisingly, the Board found that the word marks were identical.  UTEP’s registrations and SIM’s applications included the identical goods “media guides” in Class 16.  In addition, they included various clothing items in Class 25, with the only difference being that most of UTEP’s registrations specified “college imprinted” clothing while SIM’s registrations specified “professional baseball imprinted” clothing.  The Board focused much of its opinion on whether the terms “college imprinted” and “professional baseball imprinted” sufficiently differentiated the goods.

Ultimately, the Board found that the terms “college imprinted” and “professional baseball imprinted” merely meant that the identical MINERS marks would both be imprinted on clothing.  None of the registrations at issue included any restrictions on the channels of trade.  Thus, the Board also found that both parties’ products would be distributed through similar trade channels to similar classes of purchasers.  The Board concluded that there would be a likelihood of confusion between the two marks when used on the goods in Classes 16 and 25.  The Board approved SIM’s applications only for services related to professional baseball.

The Board also addressed SIM’s counterclaims under Section 18 of the Trademark Act.  In its counterclaims, SIM sought to partially restrict UTEP’s registrations by restricting the goods and services by adding, for example, “college imprinted” to the clothing  in one registration that did not include that restriction. To prevail on its counterclaims, SIM had to prove that UTEP was not using the marks on the goods or services sought be to be excluded, which was true, and that the restriction would avoid a finding of likelihood of confusion – “that is, the restriction must be ‘commercially significant.’”  The Board ruled that the restrictions were not commercially significant because the Board had already decided that adding the restriction “college imprinted” would not avoid confusion as to the Class 16 and 25 goods.   

The Board of Regents, The University of Texas System v. Southern Illinois Miners, LLC, Opposition Nos. 91183196 and 91183698 (TTAB March 13, 2014) [precedential].

The Importance of Registering Trademarks:  The Junior User Obtains Broader Rights Than the Senior User

Terra Sul opened a restaurant in 1996 in Newark, New Jersey under the name CHURRASCARIA BOI NA BRASA.  Terra Sul did not file an application to register the trademark.

In 1999, unaware of Terra Sul’s New Jersey restaurant, Boi Na Braza (“BNB”) opened restaurants under the name BOI NA BRAZA in Dallas, Atlanta and Cincinnati.  In 2002, BNB obtained a registration for the BOI NA BRAZA mark and for the design mark shown below which incorporates the words “Boi Na Braza.”  Terra Sul eventually noticed BNB’s registration for the word mark BOI NA BRAZA and successfully cancelled that registration based on likelihood of confusion with Terra Sul’s previously-used mark.  Terra Sul did not file a petition to cancel BNB’s registration for the design mark.

At issue in the current case was BNB’s new application to register BOI NA BRAZA with a geographic restriction claiming the entire United States except the entire state of New Jersey, the state in which Terra Sul’s restaurant was located.  By this application, BNB triggered a concurrent use proceeding in which Terra Sul argued that BNB’s registration should be denied entirely or restricted to the 3 geographic areas in which BNB was actually operating with the remainder of the United States belonging to Terra Sul as the senior user.

The Board ruled that BNB was entitled to registration for BOI NA BRAZA for the entire United States except the states of New Jersey and New York.   This case met the following requirements to allow two parties to concurrently own geographically restricted registrations for the same or similar marks:  (1) BNB adopted its mark in good faith without knowledge of Terra Sul’s use of its mark and before Terra Sul filed any application to register its mark, thus the parties were entitled to concurrently use the mark in commerce; and (2) the parties had co-existed for 15 years without credible evidence of actual confusion and thus, there was no likelihood of confusion as to the source of the services.

The Board then had to determine the geographical boundaries of the parties’ respective rights. Terra Sul, the senior user, had not expanded its use of its mark since 1996 and had never filed for a federal registration.  BNB, the junior user, filed for a federal registration.  In addition, BNB owned a registration for the design mark shown above which incorporates the term BOI NA BRAZA and which registration had become incontestable.  Terra Sul could not challenge that registration based on prior rights.  Thus, the Board concluded that BNB was entitled to registration of the word mark BOI NA BRAZA for the entire United States except where Terra Sul had prior rights.  Terra Sul submitted sufficient evidence to show that its reputation extended into New York and so the Board excluded New Jersey and New York from the scope of BNB’s registration.

Had Terra Sul filed an application to register its mark prior to BNB’s first use or before BNB filed its applications, it could have prevented BNB’s use of the mark entirely, or restricted BNB’s use to the geographic area in which it was operating when Terra Sul filed an application. 

Boi Na Brasa, LLC v. Terra Sul Corporation a/k/a Churrascaria Boi Na Brasa, Concurrent Use No. 94002525 TTAB March 26, 2014) [precedential]. 

The Term “Pretzel Crisps” Held Generic

Princeton Vanguard (“PV”) obtained a registration on the Supplemental Register in 2005 for the mark PRETZEL CRISPS for the goods “pretzel crackers,” with a disclaimer of exclusive rights to use the term “pretzel” apart from the mark as shown.   PV later filed a new application to register PRETZEL CRISPS for pretzel crackers on the Principal Register, claiming the mark had acquired distinctiveness.

In an opposition by Frito-Lay North America, the TTAB evaluated whether the term PRETZEL CRISPS is a generic term for pretzel crackers.  The Board found that the combined term PRETZEL CRISPS in relation to pretzel crackers does not have any additional meaning other than the meanings of the components by themselves, and thus, whether the term is generic should be analyzed by considering the meanings and uses of “pretzel” and “crisps.”   Frito-Lay submitted significant evidence that “crisps” is a generic term for crackers, including use by competitors and other third parties.  PV even admitted that some crackers are crisp.  In addition, on the packaging for its PRETZEL CRISP products, PV used the term “crisps” to provide nutrition facts for a serving size of a stated number of “crisps.” 

Both parties submitted survey evidence which, not surprisingly, arrived at different conclusions. The Board criticized Frito-Lay’s survey as being unreliable, but did not give much weight to either survey in its analysis.  In holding the term “crisps” was generic for pretzel crackers. the Board relied on dictionary definitions and evidence showing marketplace use of  the term to refer to crackers.

Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, Opposition No. 91195552 (TTAB February 28, 2014) [precedential].

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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