Eat Good Stuff Inc.v.Good Stuff Eatery International, LLC

Trademark Trial and Appeal Board

Jan 13, 2014

No. 94002564 (T.T.A.B. Jan. 13, 2014)

Mailed: January 13, 2014

Concurrent Use No. 94002564

Eat Good Stuff Inc.

v.

Good Stuff Eatery
International, LLC

Before Seeherman, Taylor and Kuczma, Administrative
Trademark Judges.

By Kuczma, Administrative Trademark Judge:

Eat Good Stuff, Inc. (“applicant”) has applied for a
concurrent use registration for the mark GOOD STUFF in
standard characters for “restaurant services” in Class 43.1
The application as amended recites applicant’s area of use
as the states of Arizona, California, Nevada, Oregon and
Washington.
Applicant named the original owner of Registration No.
4034174, Sunnyside Group LLC, as the sole exception to its

1 Application Serial No. 85347943 filed June 16, 2011, and
alleging June 28, 1979, as the date of first use anywhere and the
date of first use in commerce. The application was published for
opposition on October 17, 2012.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Concurrent Use No. 94002564
2
exclusive right to use its GOOD STUFF mark. Registration
No. 4034174 is for the mark GOOD STUFF EATERY in standard
characters for “Restaurant services” in Class 43.2
Prior to the institution of the instant concurrent use
proceeding, Registration No. 4034174 was assigned to Good
Stuff Eatery International, LLC. Good Stuff Eatery
International, LLC (“registrant”) is therefore the owner of
the registration and, as such, is the party defendant. See
TBMP § 512.01 (3d ed. rev. 2 2013).3
On July 3, 2013, registrant filed a document entitled
Registrant’s Statement to Petitioner’s Application for
Concurrent Use Registration and a copy of a Concurrent Use
Agreement executed by both applicant and registrant setting
forth geographic restrictions as to applicant's use of its
involved mark.4 In an order dated September 11, 2013, the
Board determined that the Concurrent Use Agreement was
deficient and allowed the parties sixty days in which to
file a concurrent use settlement agreement that delineated

2 Registration No. 4034174 issued on October 4, 2011, from
Application Serial No. 85220968 filed on January 19, 2011,
alleging December 11, 2007 as the date of first use anywhere and
July 4, 2008 as the date of first use in commerce. The word
“EATERY” is disclaimed.

3 The assignment was recorded on January 8, 2013 at Reel 004802,
Frames 0992-0995.

4 The Concurrent Use Agreement was executed by both parties prior
to the institution of this proceeding; and registrant executed
that Agreement prior to the amendment of applicant’s application
to a concurrent use application.

Concurrent Use No. 94002564
3
the parties’ respective, non-overlapping geographic
territories, included registrant’s consent to entry of
geographic restrictions to its registration, and identified
the specific restrictions being requested for the concurrent
use registrations being sought.
In response to the Board’s order, the parties timely
submitted a second agreement entitled “Concurrent Use
Settlement Agreement.” Pursuant to the terms of the
Concurrent Use Settlement Agreement, which incorporates the
terms of the previously-filed Concurrent Use Agreement (the
foregoing Agreements being jointly referred to herein as
“Agreements”), registrant consents to having its existing
Registration No. 4034174 be amended to geographically
restrict the registration to the entire United States except
the states of Arizona, California, Nevada, Oregon and
Washington. (¶ No. (2)).
The Concurrent Use Settlement Agreement also
articulates the bases for the parties’ belief that the use
of their respective marks avoids a likelihood of confusion
(¶ No. (6)), the steps the parties will undertake to avoid a
likelihood of confusion (¶¶ Nos. (5) and (7)), their
agreement to cooperate and consult with one another should
further conditions or developments suggest the possibility
that the parties’ marks might be likely to be confused (¶
No. (9)), and that there have been no known instances of
Concurrent Use No. 94002564
4
actual confusion during the over-five-year period that the
parties’ restaurants have operated concurrently (¶ No. (8)).
Upon careful consideration of the Agreements between
the parties, the Board is persuaded that, under the
circumstances of this case, concurrent use by the parties of
their involved marks will not be likely to cause confusion.
In making this determination, the Board has taken into
account not only the provisions of the Agreements and the
actual geographic delineations of use, but also the
voluntary entrance by the parties into agreements which
include provisions for concurrent use when it would be
clearly against their business interests to cause confusion
on the part of the public. See Amalgamated Bank of New York
v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d
1305 (Fed. Cir. 1988).
Decision:
We find that the Agreements entered into between the
parties are adequate evidence that confusion is unlikely and
supports applicant’s right to register its mark with
appropriate geographical restrictions. See In re Four
Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed.
Cir. 1993).
Accordingly, applicant’s concurrent use application
Serial No. 85347943 is entitled to proceed to registration
of the mark GOOD STUFF for “restaurant services” that is
Concurrent Use No. 94002564
5
geographically restricted to: the states of Arizona,
California, Nevada, Oregon and Washington.
Registrant’s Registration No. 4034174 for the mark GOOD
STUFF EATERY will be geographically restricted to: the
entire United States except the states of Arizona,
California, Nevada, Oregon and Washington.
* * *