In Boi Na Brasa LLC v Terra Sul Corporation a/k/a Churrascaria Boi Na Brasa (Concurrent Use No 94002525, March 26 2014, precedential), the Trademark Trial and Appeal Board (TTAB) has held that the plaintiff was entitled to a concurrent use registration for the entire United States, except where the defendant had prior rights.
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 three geographic areas in which BNB was actually operating with the remainder of the United States belonging to Terra Sul as the senior user.
The TTAB 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:
- 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
- the parties had co-existed for 15 years without credible evidence of actual confusion and there was thus no likelihood of confusion as to the source of the services.
The TTAB 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 terms ‘Boi Na Braza’ and the registration of which had become incontestable. Terra Sul could not challenge that registration based on prior rights. Thus, the TTAB 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 TTAB 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.
This article first appeared on WTR Daily, part of World Trademark Review, in May 2014. For further information, please go to www.worldtrademarkreview.com.