If you read enough decisions from the Trademark Trial and Appeal Board involving restaurant services, you would get the impression that restaurants do everything. A recent decision from the TTAB stayed with this trend. TacoLand Holdings, LLC d/b/a TacoLand (standard characters) filed a service mark application for TACOLAND in connection with “entertainment, namely, live music concerts” in International Class 41 and “bar and cocktail lounge services” in International Class 43.
The Trademark Office refused registration of the TACOLAND mark based on a prior registered mark for TACO TIERRA & Design for “restaurant services ” in International Class 43. TACO TIERRA is a traditional Mexican-American restaurant and does not advertise any live entertainment.
The Trademark Office offered three, third-party websites for establishments that served food and advertised live music, and several use-based third-party registrations for live music entertainment and restaurant services. In all the examples offered by the Trademark Office, the live musical performances are ancillary to the restaurant aspect of the establishments. In the case of TACOLAND, the live musical entertainment is the primary business and any food service is ancillary to this main business. Nevertheless, because the Trademark Office does not consider the marketplace reality, it found that the services at issue were related.
Which raises two important issues. First, if you were focusing only on Class Numbers when doing a trademark search, you would have missed that live musical concerts are related to restaurants. This why focusing on related goods instead of class numbers is so critical when doing a trademark search.
Second, when dealing with goods or services that could be offered at a restaurant, it is critical to focus a trademark search or response to an office action on what the restaurants are known for. If the evidence shows that something is merely offered at the restaurant, that needs to be your focal point because that is where you will have the best chance at overcoming a refusal.
With the services being related and TIERRA being the Spanish word for LAND, TacoLand had to make the conceptual weakness argument. Unfortunately for TacoLand, it was only capable of producing three TACO-formative third-party registrations, which is seven less than the magic number 10 we believe needs to be hit before the Board will conclude a crowded field exists.