Del Taco Says Its 'Secret Menu' From Bought-Out Brand Protects Its Mark From Abandonment; Judge Disagrees

from the secret-sauce dept

If you cover enough intellectual property dispute stories, you tend to hear some of the same arguments over and over again. Even if the claims are specious at best, you get used to covering tenuous arguments for customer confusion, to pointing out the problem of non-competition and differentiating markets, and even to discussing just how similar two obviously different logos/names/whatever might be. But every once in a while, you come across a claim that's new and inventive in the most hilariously wrong ways and that, my friends, is a special moment.

Please allow me to introduce you to Del Taco, a large restaurant group operating mostly on the West Coast. All the way back in the late 80's, Del Taco merged with another West Coast taco chain called Naugles. Naugles had a certain beloved reputation with its fans and since Del Taco shut down the last Naugles-name-bearing restaurant in 1995, one particular fan decided to try to bring the name and the menu back, resurrecting it from non-use.

Since 2010, Christian Ziebarth, a Huntington Beach resident, has been fighting for the Naugles trademark, a brand that merged with Del Taco in 1988. In a petition with the U.S. Patent and Trademark agency, Ziebarth argued Del Taco abandoned the brand years ago, legally allowing him to make a claim. The Lake Forest-based company has been fighting him ever since. On Tuesday, a federal panel said Del Taco was unable to prove they had kept the trademark alive since closing the last restaurant in 1995.

“The record unequivocally shows that respondent (Del Taco) ceased operating the last restaurant bearing the Naugles name on October 25, 1995,” the panel stated in an order filed Tuesday. As a result, the panel granted Ziebarth’s “claim of abandonment.”

Sure they did, and it's a very nice end to a trademark story, one which will allow the Naugles name and menu to be brought back from the dead and made available to interested customers once more. We could simply leave things there, except the summary begs the obvious question: if Del Taco stopped using the Naugles name in 1995, what in the world was its argument for non-abandonment? The answer, as it turns out, is a secret, but not the kind of secret I can't share with you.

In court documents and previous statements to the Register, Del Taco has argued that Naugles is part of the company’s heritage, and it has kept the brand alive by consistently offering a secret Naugles menu at its restaurants.

Ah, yes, the old double-secret hidden menu line of reasoning! As far as I can tell, this is a wonderfully new and equally funny legal theory to put forth, one which argues that a trademark, used as a distinguishing indication of a brand for customers, is chiefly utilized via a "secret menu", ostensibly kept "secret" from those same customers, unless you know some kind of special handshake or something. To put this forth is to misunderstand the most basic concepts behind trademark law entirely. As noted above, the court apparently paused its collective laughing long enough to rule in favor of Ziebarth.

And so Naugles returns, assuming Del Taco doesn't have any other creative legal theories based on subterfuge to offer up.

Filed Under: abandonment, christian ziebarth, secret menu, trademark
Companies: del taco, naugles

Macy's Trying To Keep Others From Using The Brands It Bought And Then Abandoned

from the mine! dept

In the interest of full disclosure, I hope there is a special place in Hell reserved for the Macy's people. A decade ago, the department store giant waltzed into my hometown of Chicago and gobbled up the State Street institution known as Marshall Field's, forever changing how Christmas is experienced by young people in this city of mine. Now, making matters worse, it appears that Macy's is attempting to retain some kind of ownership over the brands its buy-ups dissolved, contrary to the rules about trademark abandonment.

When Macy’s Inc. swallowed up a slew of department stores across the land — from Marshall Field’s to Filene’s, Abraham & Straus to Jordan Marsh — it rebranded many of them, turning the formerly regional chains into Macy’s stores. But in a new lawsuit brought by the company that echoes a suit from 2011 that was slated to come to trial soon, Macy’s says the California company behind the resurrection of Hydrox and Astro Pops is infringing on trademarks it held for many of those recognizable brand names.

Macy’s alleges that Strategic Marks infringed on its trademarks once again when it began selling T-shirts and candy under those 12 additional brands last month. In 2010, Strategic Marks had applied to register for trademarks for some of those names to be on clothing sold online and potentially in pop-up stores in the future, “using typestyles which are intentionally identical to those used by Macy’s,” the suit says.

Strategic Marks vehemently disagrees in a countersuit, pointing out that after Macy's bought up all those brands, it then rebranded them as Macy's stores and abandoned the use of the original names. Under the Lanham Act, the failure to use a trademark for at least three years constitutes abandonment, leaving others free to use them as they see fit. Which is exactly what Strategic Marks did in selling nostalgic apparel using the brand-names. Ellia Kassoff, founder of Strategic Marks, is once again asserting abandonment, as he did when Macy's first filed against him in 2011.

“They weren’t using these trademarks,” he told Consumerist back then, claiming, “We have proof they weren’t using these trademarks… Macy’s went to the Trademark Office and said, ‘No, no! These are ours! These are ours! We started it! This has our heritage! It’s our heritage!’ And the Trademark Office said, ‘Sorry, but you’re not using it. You haven’t used it in years.’”

Should that prove to be true, the Macy's suit is meritless and smacks of a company seeking to dissolve brands through buyouts and then attempting to control the use of those dissolved brands after they've been buried in the graveyard. Large companies buying out local corporations is an unfortunate but legal reality, but detaining those beloved brands even after they've been put to death isn't just silly, it's cruelly authoritarian. On top of that, given that Macy's went to some length specifically to re-brand the old names into the Macy's fold, it's difficult to understand where customer confusion over nostalgic apparel is going to come in.

The trial date for both suits is set for March, where hopefully the dead brands will be set free.

Filed Under: abandonment, abraham & strauss, filene's, jordan marsh, lanham act, marshall field's, trademark
Companies: macy's, strategic marks