Wednesday, July 30, 2008

Las Vegas Mexican Restaurant Loses TTAB Opposition

The TTABlog® reported on a decision by the Trademark Trial and Appeal Board ("TTAB") upholding an opposition brought by the owners of Zabar’s, a gourmet epicurean emporium in the Upper West Side of New York City, against the owners of Zaba's Mexican Grill, a Las Vegas-based Mexican restaurant chain. See Zabar's & Co. v. Zaba's Grill, LLC, Opposition No. 91163191 (T.T.A.B. July 10, 2008).

Zabar’s, in business since 1934, provides food catering services and retail store and mail order services in the field of gourmet foods using the name “Zabar’s” and holds several related trademark registrations for the ZABAR’S mark for such services.

Zaba’s Grill, LLC ("Zaba's") sought to register the mark ZABA’S (both word mark and design mark) for “restaurant services” claiming date of first use on October 10, 2001. Zabar's filed notices of opposition when the applications were published for opposition citing likelihood of confusion and of dilution of its famous mark as grounds for opposing registration.

The TTAB first addressed (and rejected) Zabar’s claim of fame, finding that its evidence of fame was more along the lines of niche fame and fell short of demonstrating the necessary widespread recognition of Zabar’s name with its products and services. [Ed. – I had never heard of Zabar’s before this decision, but I have seen the Zaba’s restaurants around town].

However, the TTAB did find the mark to be strong, thereby entitling the mark to a broader scope of protection than a less distinctive mark.

In analyzing the other likelihood of confusion factors, the TTAB found 1) the marks to be highly similar in appearance and sound; 2) the services to be related (because Zaba’s broad “restaurant services” could include the offering of catering services and because Zabar’s own retail store services includes food bar/café services from a café it has in its store); 3) the services were offered in similar channels of trade (i.e., the general public); and 4) consumers are not likely to exercise a high degree of care in purchasing inexpensive food items.

The TTAB also rejected as too dissimilar various third party registrations offered by Zaba’s to try and show that Zabar’s was not strong. The TTAB also dismissed the lack of any actual confusion despite over six years of coexistence by the parties on the basis that reliable evidence of actual confusion is difficult to adduce and nonetheless is not necessary to establish likelihood of confusion.

Because the factors on balance weighed in favor of Zabar’s, the Board was left with the conclusion that there exists a likelihood of confusion and sustained Zabar’s opposition to registration.

Vegas™Esq. Comments:
This is one of those cases where, upon first glance, it would seem obvious that there is no likelihood of confusion between the two marks. After all, the USPTO found no likelihood of confusion during the examination phase. And yet, when you actually start to do an analysis of each of the factors according to established legal precedents, you find that each of the factors tends to favor Zabar’s, and you are left with the inevitable conclusion that there must be a likelihood of confusion (despite a gut reaction to the contrary).

One of the arguments made by Zaba’s (and rejected by the Board) was that consumers would not be confused between the two marks because the Zaba’s mark is used in connection with a Mexican restaurant and Zabar’s a New York gourmet market and catering service. Naturally, the Board rejected this argument because Zaba’s application recites “restaurant services” and such services are not limited to Mexican restaurants and likewise Zabar’s registration is not limited to “New York style” gourmet food store and catering. However, one wonders if the TTAB might have been willing to perceive some of those factors in Zaba’s favor if the recitation of services in Zaba’s application had been more specific such as “restaurant services, namely, carry out and dine-in restaurants serving Mexican food.”

As a show of my support for the hometown team, I know where I’m going to be eating out this weekend.

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