The Trademark Trial and Appeal Board (TTAB) refused Southwestern Management’s (Applicant) petition for concurrent use registration for the mark DELMONICO’S for restaurant services.

Applicant applied to register the mark DELMONICO’S for its restaurants, which are located in the states of New York and Florida. Ocinomled, Ltd. (OL) and Emeril’s Food of Love Productions, LLC (EFOL) each operate restaurants under the name DELMONICO’S and DELMONICO, respectively, and both companies opposed registration of the mark. In response, Applicant sought to amend its application to seek a concurrent use registration covering the entire U.S. except for the geographic areas in which the Opposers’ restaurants are located.

OL operates a steakhouse in New York under the name DELMONICO’S, in the same location as a prior historic restaurant under the same name. OL does not claim to own the goodwill associated with the prior restaurant, but invokes a cultural connection to the historic Delmonico’s restaurant.

EFOL operates two restaurants under the mark DELMONICO. One is EMERIL’S DELMONICO in New Orleans, and the other is DELMONICO STEAKHOUSE in Las Vegas. These restaurants benefit from the fame and reputation of Emeril Lagasse, the celebrity chef who owns the restaurants.

In its amended application, Applicant listed OL and EFOL as the exceptions to its otherwise exclusive right to use the mark in commerce and claimed the exclusive right to use DELMONICO’S throughout the United States other than within a forty-mile radius around each of the Opposers’ restaurants.

To qualify for concurrent use, the Applicant must show 1) that it is entitled to use the mark, notwithstanding concurrent use by others, and 2) that no likelihood of confusion results from the concurrent use of the mark. The TTAB found that Applicant satisfied the first condition, but determined the Applicant failed to prove that concurrent use of the mark does not result in a likelihood of confusion. The TTAB held that the marks are “essentially identical” and that the goods and services, as well as the channels of trade, are similar. The TTAB also noted the extreme fame of EFOL’s restaurants as a result of the fame of Emeril Lagasse and the “peculiar form of renown” of OL’s restaurant, which exists in spite of its lack of connection to the prior historic restaurant. Furthermore, the TTAB noted instances of actual confusion. Because the likelihood of confusion was high, the TTAB refused concurrent use registration, even if Applicant’s application was further limited to the specific geographic region in which Applicant’s restaurants were located. 

Southwestern Management, Inc. v. Ocinomled, Ltd. and Emeril’s Food of Love Productions, LLC, 115 U.S.P.Q.2d 1007, Concurrent Use No. 944002242, (T.T.A.B. June 11, 2015) [precedential].