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.

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Companies: del taco, naugles

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

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Carl (profile) says:

Can you Trademark a Verbal-Only Word?

If Del Taco can prove that the mark was in normal use (unwritten, verbal use), then I think they have a reasonable claim. But can a mark be strictly verbal? You can trademark a sound, but unwritten words? Will be interesting to follow this case.

In-and-Out also has a secret, unwritten menu. I know people that use it verbally. Things like “protein style burger” and “flying dutchman” — but I’m not sure they can trademark unwritten trade names.

Far East LA (profile) says:

Re: Can you Trademark a Verbal-Only Word?

Del Taco didn’t have a leg to stand on. The USPTO Court agreed.
The InO “secret menu” isn’t a menu, but code that is passed via the Grape Vine. DT has such turnover that even, if it attempted that ruse, the meaning would have changed drastically every few weeks.

DT’s only secret was that it wasn’t bright enough to keep Naugles’ best sellers on the menu.

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