Del Taco acquired the chain of 225 Naugles Mexican fast food restaurants in 1988 and subsequently began closing them down. The last Naugles restaurant was closed in 1995. An individual named Christian Ziebarth petitioned to cancel Del Taco’s federal trademark registration for NAUGLES on the ground that the mark had been abandoned. Del Taco failed in its attempt to convince the TTAB that it had not abandoned its rights in the Naugles trademark for restaurant services and its registration was cancelled.
Under the Trademark Act, a trademark is considered abandoned if use has been discontinued with intent not to resume such use. Nonuse for three consecutive years is prima facie evidence of abandonment.
Del Taco claimed it continued to use the Naugles mark in connection with restaurant services since 1995 because it had used the mark in advertising and on clothing. The TTAB explained that use of a mark in connection with services requires that the mark be used in the sale or advertising of the services and that the services are being rendered in commerce. Thus, use on clothing does not constitute service mark use for restaurant services when there are no restaurants operating under the Naugles name. To support its contention that it had not abandoned the NAUGLES mark, Del Taco submitted a one-page food menu displaying the phrase "Viva Naugles Viva Del Taco." Unfortunately, however, Del Taco's witness could not recall when the menu was created or used and testified that since working for Del Taco in 2009, he had not seen that particular menu. Del Taco also submitted web pages showing use of the "Viva Naugles Viva Del Taco" phrase on the history section of its website. The Board held that those pages merely described the history of the merger of the Naugles and Del Taco chains, and found they were clearly not advertisements for contemporaneously-rendered restaurant services. Finally, Del Taco claimed continued use of the mark because there is a "secret menu" at Del Taco restaurants whereby consumers can order food items previously offered in Naugles restaurants. The TTAB found that even if the record supported use of a secret menu, there was no evidence that the Naugles mark was used in connection with that secret menu. Rather, the evidence suggested that consumers would just order a particular food item. The TTAB concluded there was no evidence of continued use.
Del Taco also argued it did not abandon the mark because it intended to resume use. The only evidence of that intent, however, was two internal marketing presentations made in April 2009 and June 2010 which the TTAB held was "much too late to save [Del Taco's] registration." The TTAB cited to Silverman v. CBS Inc. (9 USPQ2d 1778 (2nd Cir. 1989), in which the 2nd Circuit concluded that the statutory phrase "intent not to resume use" does not mean "intent never to resume use" but, rather, means "intent not to resume use within the reasonably foreseeable future."
Christian M. Ziebarth v. Del Taco LLC, Case No. 92053501 (TTAB April 2, 2015) [not precedential].