Boi Na Braza, LLCv.Terra Sul Corporation a/k/a/ Churrascaria Boi Na Brasa

Trademark Trial and Appeal Board

Mar 26, 2014

No. 94002525 (T.T.A.B. Mar. 26, 2014)

THIS OPINION IS A
PRECEDENT OF THE TTAB

Mailed: March 26, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Boi Na Braza, LLC
v.
Terra Sul Corporation a/k/a Churrascaria Boi Na Brasa
_____

Concurrent Use No. 94002525
_____

Justin S. Cohen of Thompson & Knight LLP for Boi Na Braza, LLC.

Eamon J. Wall of Wall & Tong LLP for Terra Sul Corporation a/k/a Churrascaria
Boi Na Brasa.
_____

Before Rogers, Chief Administrative Trademark Judge, and Bucher and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:

In 2002, Boi Na Braza, Inc., now Boi Na Braza, LLC (both referred to herein
as “BNB”) and the plaintiff in this concurrent use proceeding, obtained two
geographically unrestricted registrations. The first was for BOI NA BRAZA in
standard characters1 and the second was for the following composite word and
design mark incorporating the phrase BOI NA BRAZA:

1 Registration No. 2534608.
Concurrent Use No. 94002525

2

2
Both registrations covered restaurant services in Class 42.
Neither of the two marks was opposed when they were published a year
apart. However, five years after the first registration issued for the standard
character mark BOI NA BRAZA, Terra Sul Corporation, also known as
Churrascaria Boi Na Brasa (“Terra Sul”), the defendant in this concurrent use
proceeding, petitioned for cancellation of that first registration.3
Terra Sul was successful in establishing its priority of use of the mark BOI
NA BRASA, and that BNB therefore was not entitled to maintain its geographically
unrestricted registration for BOI NA BRAZA for restaurant services. Thus, on June
12, 2009, a panel of this Board ordered the registration cancelled.4
BNB then filed for the geographically restricted registration that is the focus
of the instant proceeding, for BOI NA BRAZA for restaurant and bar services, in
standard characters and with an English translation of the mark as meaning “steer

2 Registration No. 2666968.
3 No petition was filed to cancel the composite word and design mark, then or later.
4 Cancellation No. 92047056. BNB filed the application that matured into the cancelled
registration, No. 2534608, on July 1, 1999; the registration issued January 29, 2002 and
was cancelled September 15, 2009.
Concurrent Use No. 94002525

3

over embers.”5 In that application, BNB acknowledged at least some prior rights in
Terra Sul as a prior user.6 The application was filed with a geographic restriction
claiming the entire United States except for the state of New Jersey and names
Terra Sul as the exception to BNB’s exclusive right to use the mark in commerce.
Notwithstanding such acknowledgement, Terra Sul opposed BNB’s
application when it published for opposition;7 but, on December 13, 2011, the Board
dismissed that opposition in favor of this concurrent use proceeding, which was
instituted by the same order dismissing the opposition.8
Terra Sul asserts, in its answer to the notice instituting this concurrent use
proceeding, that it has rights more extensive than those acknowledged in the BNB
application, claiming that it has used the mark CHURRASCARIA BOI NA BRASA
in the states of New Jersey, New York “and elsewhere” since 1996. Terra Sul asks
that the mark in the involved application either be denied registration or restricted
to BNB’s three areas of actual use of the BOI NA BRAZA mark: Dallas, Texas;
Atlanta, Georgia; and Cincinnati, Ohio.

5 Application Serial No. 77779339, filed July 13, 2009, alleging first use on July 19, 1999
and first use in commerce on September 11, 2000.
6 As detailed infra, Terra Sul has two later-filed applications, geographically unrestricted,
that are currently suspended in the examining operation and not involved in this
concurrent use proceeding.
7 Opposition No. 91196845, opposing registration on the ground, inter alia, of a likelihood of
confusion with its common-law mark BOI NA BRASA pursuant to Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d).
8 The Board also applied the doctrine of merger and bar to dismiss sua sponte Terra Sul’s
additional grounds for opposition under Trademark Act Section 2(e). Had Terra Sul not
opposed, this concurrent use proceeding would have been instituted earlier and Terra Sul
would have had the option to contest BNB’s application in such proceeding, as it has done.
Concurrent Use No. 94002525

4

BNB has moved, in the alternative, to amend its application to restrict it to
the entire United States except for the states of New Jersey and New York.9
While the concurrent use proceeding ostensibly focuses on BNB’s involved
application for a geographically restricted registration for BOI NA BRAZA, that
application claims ownership of BNB’s geographically unrestricted registration for
the composite word and design mark shown above incorporating the phrase BOI NA
BRAZA for restaurant services.10 Thus, we now must determine whether BNB has
carried its burden as plaintiff and shown that it is entitled to the geographically
restricted registration for which it has applied. We also must determine whether
BNB’s claimed unrestricted Registration No. 2666968 should be restricted in
accordance with whatever territorial restriction we find appropriate for BNB’s
involved application.
The Record
The record includes the file of the involved application, BNB’s unrestricted
registration, and certain documents from Cancellation No. 92047056.11

9 10 TTABVUE. (Citations to the record include the TTABVUE entry number and, if
applicable, the electronic page number where the document or testimony appears.)
10 Registration No. 2666968 is claimed by BNB in its concurrent use application, and is
therefore included in this proceeding. See Trademark Trial and Appeal Board Manual of
Procedure (TBMP) § 1104 (3d ed. rev. 2 June 2013) (stating that registrations involved in a
concurrent use proceeding include every registration claimed by the concurrent use
applicant in the concurrent use application, unless there is no conflict between the mark in
such registration and the mark of the other party to the proceeding). Even had BNB not
claimed ownership of the registration, however, the Board would have been able to add it to
this proceeding.
11 Excerpts submitted as Exhibits C-G to Terra Sul’s Notice of Reliance, 19 TTABVUE at 47
through 20 TTABVUE at 164. The remaining documents from the opposition and
cancellation proceedings are not automatically of record, as the parties apparently
assumed, but would not be material to our decision here.
Concurrent Use No. 94002525

5

The parties made the following additional evidence of record:
• Printouts from the electronic database records of the U.S. Patent and
Trademark Office of the files of the following applications and
registrations:
o BNB’s cancelled Registration No. 2534608.12
o Two geographically unrestricted applications which were filed
by Terra Sul after the involved application and which are not
part of this proceeding.13 One application is for the standard
character mark BOI NA BRASA;14 the other is for the
composite shown below:
15

12 Terra Sul’s Notice of Reliance, Exhibit K, 21 TTABVUE at 22; BNB’s Notice of Reliance,
Exhibit 8, 13 TTABVUE at 321.
13 Terra Sul submitted evidence that its unrestricted applications Serial Nos. 77813416 and
77813335 are suspended pending the outcome of this proceeding. Terra Sul’s Notice of
Reliance, Exhibits H and “I,” 20 TTABVUE at 165-245. As noted, the suspended
applications, not having been published for opposition, are not a part of this proceeding.
See Section D infra.
14 Application Serial No. 77813335, filed August 26, 2009 for “restaurant and bar services;
restaurant services; restaurant and catering services; restaurant and café services; take out
restaurant services” in International Class 43. Terra Sul’s Notice of Reliance, Exhibit “I,”
20 TTABVUE at 209; BNB’s Notice of Reliance, Exhibit 6, 13 TTABVUE at 311.
15 Application Serial No. 77813416, filed August 26, 2009 for “restaurant and bar services;
restaurant services; restaurant and catering services; restaurant and café services; take out
restaurant services” in International Class 43. Terra Sul’s Notice of Reliance, Exhibit H, 20
TTABVUE at 165; BNB’s Notice of Reliance, Exhibit 5, 13 TTABVUE at 302.
Concurrent Use No. 94002525

6

• The following discovery responses:
o Terra Sul’s written responses to BNB’s requests for production,
requests for admission, and interrogatories.16
o BNB’s responses to Terra Sul’s interrogatories and requests for
admission.17
• Pages from printed publications The Star Ledger (Newark, NJ);18
Luso-Americano;19 Brazilian Times;20 Brazilian Voice;21 and Brazilian
Press.22
• Documents produced by Terra Sul and referenced in its interrogatory
responses.23 These include, e.g., printed publications, promotional and
advertising invoices, photos of a “Churrascaria Boi-Na-Brasa” [sic]
banner hanging over a street festival, a menu from the restaurant,
certain of Terra Sul’s corporate records, and a copy of a cease-and-
desist letter counsel for BNB sent to Terra Sul’s owner on January 11,
2007.
• The docket sheet for Cancellation No. 92047056,24 as well as Terra
Sul’s trial brief25 and reply brief26 in that proceeding.

16 BNB’s Notice of Reliance, Exhibits 1-3, 13 TTABVUE at 7-81.
17 Terra Sul’s Notice of Reliance, Exhibits A and B, 19 TTABVUE at 7-46.
18 BNB’s Notice of Reliance, Exhibit 13, 14 TTABVUE at 54-55; Terra Sul’s Notice of
Reliance, Exhibit L, 21 TTABVUE at 103-04.
19 BNB’s Notice of Reliance, Exhibit 14, 14 TTABVUE at 56-64; Terra Sul’s Notice of
Reliance, Exhibit M, 21 TTABVUE at 105-13.
20 BNB’s Notice of Reliance, Exhibit 15, 14 TTABVUE at 65-68; Terra Sul’s Notice of
Reliance, Exhibit N, 21 TTABVUE at 114-17.
21 BNB’s Notice of Reliance, Exhibit 16, 14 TTABVUE at 69-72; Terra Sul’s Notice of
Reliance, Exhibit “O,” 21 TTABVUE at 118-21.
22 BNB’s Notice of Reliance, Exhibit 17, 14 TTABVUE at 73-216; Terra Sul’s Notice of
Reliance, Exhibits P-Q, 21 TTABVUE at 122-279.
23 BNB’s Notice of Reliance, Exhibit 4, 13 TTABVUE at 82-301. Documents provided as all
or part of an answer to an interrogatory may be made of record by notice of reliance. See
TBMP §§ 704.10, 704.11. To the extent that any of the documents in this exhibit were
produced by Terra Sul in the cancellation proceeding rather than this proceeding, we treat
their admission as stipulated by the parties, because the parties also have introduced
discovery and testimony deposition excerpts from that proceeding.
24 Terra Sul’s Notice of Reliance, Exhibit C, 19 TTABVUE at 47-49.
25 BNB’s Notice of Reliance, Exhibit 9, 13 TTABVUE at 323 through 14 TTABVUE at 11.
Concurrent Use No. 94002525

7

Finally, by Order of January 30, 2013, the Board granted motions by both
parties to introduce portions of the discovery and testimony depositions of Terra
Sul’s owner, Farid Saleh, from the cancellation proceeding.27
The Parties
Terra Sul is owned by Brazilian native Farid Saleh, who opened a restaurant
under the mark CHURRASCARIA BOI NA BRASA in Newark, New Jersey in April
1996.28 Terra Sul acquired the restaurant in 1999.29 Mr. Saleh also is president of
a second company, Gullas Corp., which owns a restaurant named BOI NA BRASA
BAR AND GRILL in Newark. This restaurant opened in 2005 less than a half-mile
from CHURRASCARIA BOI NA BRASA.30
Terra Sul’s records show that it has advertised sporadically, primarily in
Portuguese-language newspapers. Some of these advertisements are local to New
Jersey, while others are in newspaper editions with mastheads indicating broader
distribution, as follows:

26 Id., Exhibit 10, 14 TTABVUE at 12; Terra Sul’s Notice of Reliance, Exhibit F, 20
TTABVUE at 135.
27 The discovery deposition, taken March 25, 2008, appears in the record (in whole or in
part) as Exhibit A to Terra Sul’s Motion to Use Testimony from a Prior Proceeding, 18
TTABVUE at 8-67; Exhibit D to Terra Sul’s Notice of Reliance, 19 TTABVUE at 50-182,
demonstrating that BNB introduced this deposition at trial in the cancellation proceeding;
and BNB’s Supplemental Notice of Reliance, Exhibit 1, 15 TTABVUE at 5-52. Mr. Saleh’s
testimony deposition, taken August 7, 2008, appears in the record as Exhibit B to Terra
Sul’s Motion to Use Testimony from a Prior Proceeding, 18 TTABVUE at 68-104; Exhibit 2
to BNB’s Supplemental Notice of Reliance, 15 TTABVUE at 53-99; and as Exhibit A to
Exhibit E, Terra Sul’s Notice of Reliance, 19 TTABVUE at 210 through 20 TTABVUE at 83.
28 Saleh Testimonial Deposition at 51, 18 TTABVUE at 73.
29 Terra Sul acquired the restaurant from original owner Churrascaria Boi Na Brasa Corp.,
of which Mr. Saleh also was president. Id. at 6-7, 19 TTABVUE 212.
30 Id. at 66, 18 TTABVUE at 77; Terra Sul’s Response to Interrogatory No. 1, BNB’s Notice
of Reliance, Exhibit 3 at 4, 13 TTABVUE at 56.
Concurrent Use No. 94002525

8

• Brazilian Press: Editions of this newspaper appear to be distributed in
three different areas:
o New Jersey;31
o New Jersey, New York, Connecticut, Massachusetts,
Pennsylvania, Washington, D.C., and Maryland;32 and
o New Jersey, New York, Connecticut, Massachusetts, Florida,
Washington DC, Virginia, Maryland, California, Rhode Island,
Pennsylvania, and Georgia.33
• Brazilian Times: New York, New Jersey, Connecticut, and
Pennsylvania.34
• Luso-Americano: Masthead not included, but the paper references
Philadelphia, Pennsylvania and Mount Vernon and Yonkers, New
York.35
Terra Sul also has done some television advertising, both nationwide on
Portuguese-language channel TV Globo International (a Dish Network channel),
and in English through Comcast Cable on the Food Network, ESPN, CNN, and Fox,
reaching New Jersey and New York City, including the borough of Staten Island.36
Mr. Saleh testified that he has considered opening a restaurant in New York,
and has customers who reside there.37 Terra Sul admits that it does not render any

31 See 21 TTABVUE at 134, 210, 234, 250, 259.
32 See id. at 268, 271.
33 See id. at 126.
34 See, e.g., id. at 115.
35 See 14 TTABVUE at 60-61.
36 Saleh Discovery Deposition at 70-74, 15 TTABVUE at 39-43; 19 TTABVUE at 164, 170,
172.
37 Saleh Testimony Deposition at 68, 15 TTABVUE at 80. See also, e.g., Terra Sul’s
Response to Interrogatory No. 15, BNB’s Notice of Reliance, Exhibit 3, 13 TTABVUE at 64
(“No goods or services were sold in the State of New York. However, many New York
residents have been and continue to be patrons of Excepted User’s restaurants . . . .”) and
Response to Interrogatory No. 23, 13 TTABVUE at 70 (“Excepted User may decide in the
Concurrent Use No. 94002525

9

restaurant or bar services in New York.38 However, it provided related catering
services at a party at a home in New York in approximately 2005.39 Terra Sul also
distributed flyers and T-shirts at a large Brazilian party in New York in 2005 and
2006.40 Terra Sul maintains a promotional website at www.boinabrasa.com.41
BNB was incorporated in 1999 by brothers Jonas, Joseph, and Julio Matheus,
also Brazilian natives, and proceeded to open Brazilian barbeque-style
restaurants.42 BNB has used the mark BOI NA BRAZA in connection with its
restaurants in the Dallas, Texas area; Cincinnati, Ohio; and previously, including
through a licensee, in Atlanta, Georgia.43 BNB has spent more than $2 million
advertising its mark.44 BNB advertises nationally and internationally in American
Way and Delta Sky, the inflight magazines of American Airlines and Delta,
respectively, and locally in publications in Dallas, Cincinnati, and Atlanta.45 BNB
maintains a promotional website at boinabraza.com.46

future to open additional restaurants using the same or similar names in nearby
geographic regions, but Excepted User has made no such plans at this time.”).
38 Terra Sul’s Response to Request for Admission No. 9, BNB’s Notice of Reliance, Exhibit 2,
13 TTABVUE at 48.
39 Saleh Testimonial Deposition at 47-48, 88, 91, 15 TTABVUE at 70-71, 91, 94.
40 Saleh Discovery Deposition at 81, 15 TTABVUE at 50.
41 Saleh Testimonial Deposition at 58, 15 TTABVUE at 75.
42 BNB’s Responses to Interrogatory Nos. 16, 26-27, 30, Terra Sul’s Notice of Reliance,
Exhibit A, 19 TTABVUE at 16, 22-23; id., Exhibit E to Exhibit E, 20 TTABVUE at 134.
43 Id., BNB’s Response to Interrogatory No. 23, 19 TTABVUE at 20.
44 Id., BNB’s Response to Interrogatory No. 34, 19 TTABVUE at 25.
45 Id., BNB’s Responses to Interrogatory Nos. 20, 23, 32, 42, 43, 19 TTABVUE at 17-18, 20-
21, 24, 28-29.
46 Id., BNB’s Responses to Interrogatory Nos. 13, 17, 20, 23, 32, 42, 43, 19 TTABVUE at 15,
16, 18, 20, 24, 28, 29. There is no evidence either party’s website has a disclaimer.
Concurrent Use No. 94002525

10

BNB contends that “boi na brasa” is commonly used in Brazil, and that it
merely changed the “s” to a “z” to make its restaurant name more distinctive:
[T]he name “boi na brasa” is a well known name that is
often used in Brazil. Based on their knowledge of the
name from its use in Brazil, the Matheus brothers chose
this name for their restaurant business and began
marketing the business as such at least as early as July 1,
1999. The Matheus brothers changed the “s” to a “z” to
give the name more distinctiveness.47
Terra Sul disputes that “boi na brasa” is well-known in Brazil. Mr. Saleh adopted
the mark “based on his fond memories of a Brazilian butcher shop in his village
known as ‘boi na brasa.’”48
Analysis
As we stated in America’s Best Franchising Inc. v. Abbott, 106 USPQ2d 1540
(TTAB 2013) (“America’s Best”), concurrent use proceedings are governed by the
following proviso of Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d):
[I]f the Director determines that confusion, mistake, or
deception is not likely to result from the continued use by
more than one person of the same or similar marks under
conditions and limitations as to the mode or place of use
of the marks or the goods on or in connection with which
such marks are used, concurrent registrations may be
issued to such persons when they have become entitled to
use such marks as a result of the concurrent lawful use in
commerce prior to (1) the earliest of the filing dates of the
applications pending or of any registration issued under
this chapter . . . .

47 Id., BNB’s Responses to Interrogatory Nos. 16, 18, 31, 19 TTABVUE at 16, 17, 24.
48 Terra Sul’s Response to Interrogatory No. 1, BNB’s Notice of Reliance, Exhibit 3 at 4, 13
TTABVUE at 56.
Concurrent Use No. 94002525

11

In other words, there are two “conditions precedent to the issuance of concurrent
registrations,” specifically that: (1) the parties are presently entitled to concurrently
use the mark in commerce, and (2) there is no likelihood of confusion, mistake or
deception in the market place as to the source of the goods resulting from the
continued concurrent use of the trademark(s). America’s Best, 106 USPQ2d at 1547
(quoting In re Beatrice Foods Co., 429 F.2d 466, 166 USPQ 431, 435-36 (CCPA
1970)). Furthermore, when a claim is made of concurrent rights, such use must
begin prior to the filing date of any application by a conflicting claimant to the same
mark or one which may be likely to cause confusion with that of the claimant.
Action Temp. Servs. Inc. v. Labor Force, Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309
(Fed. Cir. 1989).
The applicant for concurrent registration is the plaintiff in a concurrent use
proceeding and has the burden of proof to demonstrate its entitlement to a
concurrent use registration. Over the Rainbow, Ltd. v. Over the Rainbow, Inc., 227
USPQ 879, 883 (TTAB 1985); see also Gray v. Daffy Dan’s Bargaintown, 823 F.2d
522, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987) (stating that concurrent use plaintiff
“was not ‘entitled’ to [a concurrent use] registration unless he also satisfied the
‘touchstone’ requirement of no likelihood of confusion with [the defendant’s] use”);
Trademark Rule § 2.99(e), 37 C.F.R. § 2.99(e).
In a concurrent use registration, the “conditions and limitations as to the
mode or place of” use almost always take the form of a geographic restriction,
especially where the Board, rather than a court, approves registration based on
Concurrent Use No. 94002525

12

evidence regarding the actual “conditions and limitations.” See Holmes Oil Co. v.
Myers Cruizers of Mena, Inc., 101 USPQ2d 1148, 1149 (TTAB 2011). The respective
rights of the parties to registration are determined on the basis of the facts as they
exist up to and until the close of the testimony period. Nark, Inc. v. Noah’s, Inc.,
212 USPQ 934, 944 (TTAB 1981).
A. First Condition Precedent to Issuance of Concurrent Use Registration
We begin by finding that the first condition to issuance of a concurrent use
registration, which is “primarily jurisdictional in nature,” has been met.
America’s Best, 106 USPQ2d at 1548 (quoting In re Beatrice Foods Co., 166 USPQ at
436). Because BNB’s claim of first use is prior to the filing dates of any of Terra
Sul’s applications or registrations, BNB has met the first or jurisdictional
requirement for a concurrent use registration.49 Over the Rainbow, Ltd., 227 USPQ
at 882. BNB states that it had no knowledge of Terra Sul’s use of the name
BOI NA BRASA “until it was informed by Terra Sul’s counsel, on or about January
19, 2007.”50 The evidence is consistent with BNB’s actions, and we find that BNB
adopted the BOI NA BRAZA mark in good faith and without knowledge of Terra
Sul’s prior use of BOI NA BRASA. That is, BNB is entitled to seek a concurrent use
registration based on its use of its mark in commerce. See Woman’s World Shops
Inc. v. Lane Bryant Inc., 5 USPQ2d 1985, 1987-88 (TTAB 1988) (stating that

49 Furthermore, as noted supra, although Terra Sul has pending applications not involved
in this proceeding, their filing dates are later than BNB’s filing date. Therefore, Terra Sul’s
uninvolved applications were not entitled to examination priority.
50 BNB’s Response to Interrogatory No. 19, Terra Sul’s Notice of Reliance, Exhibit A, 19
TTABVUE at 17.
Concurrent Use No. 94002525

13

“concurrent rights arise where a party, in good faith and without knowledge of a
prior party’s use in another geographical area, adopts and uses the same or similar
mark for the same or like goods or services within its own geographical area with a
measure of commercial success and public recognition and without any resulting
confusion as to source”); Olé Taco Inc. v. Tacos Ole, Inc., 221 USPQ 912, 915 (TTAB
1984) (“We have no reason to assume that this was other than an innocent use
without notice of registrant’s use and activity under the [involved] mark” where
uncontroverted evidence established the concurrent use applicant’s use before the
excepted registrant’s filing date).
In such circumstances, “it is settled law that each party has a right to use its
mark in its own initial [geographic] area of use.” Weiner King, Inc. v. The Wiener
King Corp., 615 F.2d 512, 204 USPQ 820, 829 (CCPA 1980) (“Weiner King”). While
the parties’ rights to use their respective marks in their initial areas of use are thus
established, what remains in dispute “are the registrable rights to the remainder of
the United States possessed by each party,” to which we will return in Part C infra.
Id.; see also Alfred Dunhill of London, Inc. v. Dunhill Tailored Clothes, Inc., 293
F.2d 685, 130 USPQ 412, 418-20 (CCPA 1961).
B. Likelihood of Confusion
We next consider the second “condition precedent” or threshold question, that
is, whether there would “be no likelihood of confusion, mistake or deception in the
market place as to the source of the goods resulting from the continued concurrent
use of the trademark[s]” with an appropriate geographic restriction. In re Beatrice
Foods Co., 166 USPQ at 436.
Concurrent Use No. 94002525

14

As the Board stated in instituting this case, we found that there was a
likelihood of confusion between BNB’s mark BOI NA BRAZA and Terra Sul’s mark
BOI NA BRASA for restaurant services in Cancellation No. 92047056.51 That is
not, however, the question now before us. See America’s Best, 106 USPQ2d at 1549.
Rather, “[t]he question before us is whether a likelihood of confusion would be
avoided by a geographic restriction.” Id. The record herein supports a conclusion
that confusion would not be likely with an appropriate geographic restriction.
First, the parties have already coexisted for some 15 years with no credible
evidence of actual confusion.52 The lack of evidence of confusion weighs against
finding that there is a likelihood of confusion in geographically restricted territories.
See, e.g., G.H. Mumm & Cie v. Desnoes & Geddes Ltd., 917 F.2d 1292, 16 USPQ2d
1635, 1638 (Fed. Cir. 1990) (lack of actual confusion in more than a decade weighs
against finding that confusion is likely); Citigroup Inc. v. Capital City Bank Group
Inc., 94 USPQ2d 1645, 1664-65 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253
(Fed. Cir. 2011). Moreover, the Board and other tribunals have often found that
confusion can be avoided when restaurant services in particular are offered under
identical marks but in geographically restricted territories. See, e.g., Weiner King,
204 USPQ 820 (permitting concurrent registration of WIENER KING with and
without design for hot dog restaurants and WEINER KING with and without

51 BNB also admits that BOI NA BRASA and BOI NA BRAZA are confusingly similar when
used in connection with restaurant services. BNB’s Response to Request for Admission
No. 22, Terra Sul’s Notice of Reliance, Exhibit B, 19 TTABVUE at 44.
52 See Terra Sul’s Responses to Interrogatory Nos. 25-28, BNB’s Notice of Reliance, 13
TTABVUE at 70-72.
Concurrent Use No. 94002525

15

design for hot dog restaurants in separate geographic territories); Pinocchio’s Pizza
Inc. v. Sandra Inc., 11 USPQ2d 1227 (TTAB 1989) (permitting concurrent
registration of PINOCCHIOS for restaurant services featuring pizza and
PINOCCHIO’S for restaurant services in separate geographic territories); Nark,
Inc., 212 USPQ 934 (granting registration for NOAH’S ARK for restaurant services
nationwide except for 20-mile radius around each of four restaurants using similar
marks in different states); see also Brennan’s, Inc. v. Brennan’s Rest., LLC, 360 F.3d
125, 69 USPQ2d 1939 (2d Cir. 2004) (finding no likelihood of confusion between
Brennan’s restaurants in New Orleans and New York). Restaurant services by
definition are rendered in a particular geographic location. Cf. America’s Best, 106
USPQ2d at 1550, 1552.
Our conclusion is not changed by the fact that the parties’ advertising has
overlapped. Overlapping advertising and customer solicitation does not require a
determination that there is a likelihood of confusion. CDS Inc. v. I.C.E.D. Mgmt.,
Inc., 80 USPQ2d 1572, 1583 (TTAB 2006) (construing Amalgamated Bank of New
York v. Amalgamated Trust & Sav. Bank, 842 F.2d 1270, 6 USPQ2d 1305 (Fed. Cir.
1988)). Nor does the fact that both parties have a presence on the Internet.
America’s Best, 109 USPQ2d at 1551-52. In this case, the overlap in advertising is
minimal and insufficient to create a likelihood of confusion.
For all of these reasons, we find that confusion would not be likely with an
appropriate geographic restriction, as discussed below.
Concurrent Use No. 94002525

16

C. Territory
Having found both requirements for a concurrent use application satisfied,
we turn to the appropriate geographic restriction, that is, the territory to which
each party is entitled. Actual use in a territory is not necessary to establish a
party’s rights in that territory. Weiner King, 204 USPQ at 830. “As a general rule,
a prior user of a mark is entitled to a registration covering the entire United States
limited only to the extent that the subsequent user can establish that no likelihood
of confusion exists and that it has concurrent rights in its actual area of use, plus its
area of natural expansion.” Pinocchio’s Pizza, 11 USPQ2d at 1228. However, as
explained further infra, this presumption can be overcome, for example, where – as
here – the senior user of a mark remains static and the junior user is the first to file
for a registration. See In re Beatrice Foods Co., 166 USPQ at 437 n.13 (“On the
other hand, where the prior user does not apply for a registration before registration
is granted to another, there may be valid grounds, based on a policy of rewarding
those who first seek federal registration, and a consideration of the rights created
by the existing registration, for limiting his [i.e., the prior user’s] registration to the
area of actual use and permitting the prior registrant to retain the nationwide
protection of the act restricted only by the territory of the prior user.”).
The inquiry should focus on the party’s (1) previous business activity;
(2) previous expansion or lack thereof; (3) dominance of contiguous areas;
(4) presently planned expansion; and, where applicable (5) possible market
penetration by means of products brought in from other areas. Weiner King, 204
USPQ at 830. Furthermore, as the predecessor to our primary reviewing court
Concurrent Use No. 94002525

17

pointed out in Weiner King, “there is a policy of encouraging prompt registration of
marks by rewarding those who first seek registration under the Lanham Act” – in
this case, BNB. Id., 204 USPQ at 830. Perhaps not coincidentally, the concurrent
use proviso of Section 2(d) “exhibits no bias in favor of the prior user.” Id. at 831;
see also America’s Best, 106 USPQ2d at 1553. In fact, through inaction over a
considerable period of time, a prior user may have given up the right to expand use
of its mark outside of its trading area and,
in effect, abandoned or relinquished the right as a prior
user to expand into a particular area or the right to enjoy
nationwide protection for its mark as a result of inactivity
over a reasonable period of time, which would be
indicative of a static business . . . .
Nark, Inc., 212 USPQ at 944 (quotation omitted); see also Noah’s, Inc. v. Nark, Inc.,
560 F. Supp. 1253, 222 USPQ 697, 701 (E.D. Mo. 1983), aff’d, 728 F.2d 410 (8th Cir.
1984).
This case also presents the unusual circumstance in which the
applicant/junior user has an incontestable right to use its mark as provided in
Section 15 of the Trademark Act, here for the composite mark that is the subject of
Registration No. 2666968, which incorporates the literal element BOI NA BRAZA.53
An “incontestable registration” cannot be challenged on the basis of prior rights in a
mark substantially similar to the registered mark. See Sections 15 and 33(b)(5) of
the Trademark Act, 15 U.S.C. §§ 1065 and 1115(b)(5). Under such circumstances, a
prior user normally may carve out of an incontestable registration only “the specific

53 See Terra Sul’s Notice of Reliance, Exhibit J, 20 TTABVUE at 247, 252.
Concurrent Use No. 94002525

18

area in which it has established its prior rights prior to actual or constructive notice
of said registration.” Thriftimart, Inc. v. Scot Lad Foods, Inc., 207 USPQ 330, 334
(TTAB 1980) (“Thriftimart”). As we explained in Thriftimart:
This is reflected in Section 15 of the statute and more
particularly spelled out in Section 33(b)(5) which provides
as a defense to a cause of action based on a registered
mark that has become incontestable, that
“* * * the mark whose use by a party is
charged as an infringement was adopted
without knowledge of the registrant’s prior
use and has been continuously used by such
party or those in privity with him from a
date prior to registration of the mark under
this Act or publication of the registered mark
under subsection (c) of Section 12 of this act:
Provided, however, that this defense or defect
shall apply only for the area in which such
prior continuous use is proved * * *”
Thriftimart, 207 USPQ at 334.54
Over 18 years, Terra Sul and its predecessor-in-interest have never expanded
outside of their Newark neighborhood, and Terra Sul has no tangible, current plans
to do so. In contrast, BNB, the first to file and register, has offered restaurant

54 We note that Trademark Act Section 33(b)(5) has been amended and now reads as
follows:
(5) That the mark whose use by a party is charged as an
infringement was adopted without knowledge of the
registrant’s prior use and has been continuously used by such
party or those in privity with him from a date prior to (A) the
date of constructive use of the mark established pursuant to
section 1057(c) of this title, (B) the registration of the mark
under this Act if the application for registration is filed before
the effective date of the Trademark Law Revision Act of 1988,
or (C) publication of the registered mark under subsection (c) of
section 1062 of this title: Provided, however, That this defense
or defect shall apply only for the area in which such continuous
prior use is proved . . . .
Concurrent Use No. 94002525

19

services in three U.S. cities geographically remote from one another and from Terra
Sul. BNB asserts that “[t]his dispute has always been about New York City.”55
But, while BNB states that it “intends to open a restaurant in New York under the
‘BOI NA BRAZA’ mark in the future,”56 BNB has provided no evidence of any more
specific plans to expand there. See, e.g., Spartan Food Sys. Inc. v. HFS Corp., 813
F.2d 1279, 2 USPQ2d 1063, 1066 (4th Cir. 1987) (lack of concrete plans to expand
into adversary’s geographic trading area weighed against finding of likelihood of
confusion); cf. Surfvivor Media Inc. v. Survivor Prods., 406 F.3d 625, 74 USPQ2d
1621, 1626 (9th Cir. 2005) (lack of evidence of any concrete plans to expand into
adversary’s line of business weighed against finding of likelihood of confusion).
BNB also indicated its willingness to cede the territory by moving in the alternative
to amend its application to exclude the entire state of New York along with New
Jersey, arguing that it would prevent any likelihood of confusion by serving as a
buffer zone between the parties, neither of which has operations in New York.57
Terra Sul has not operated a restaurant in New York. Although Terra Sul
catered and promoted its services there to a very limited extent, there is no evidence
establishing any such use or promotion targeted to New York prior to constructive
notice of BNB’s rights on December 24, 2002, when BNB’s Registration No. 2666968
issued. However, there is record evidence suggesting that Newark, while not
contiguous, is a neighbor near enough to draw New York City diners. The parties

55 BNB’s Brief at 5.
56 BNB’s Response to Interrogatory No. 41, Terra Sul’s Notice of Reliance, Exhibit A,
TTABVUE 19 at 28.
57 See BNB’s Brief at 18.
Concurrent Use No. 94002525

20

do little to enlighten the Board as to the degree of ease with which New York diners
may traverse the “nearly ten (10) miles, three river crossings (including the Holland
Tunnel), and Jersey City”58 to reach Terra Sul’s restaurants in Newark’s Ironbound
neighborhood. Because it is hearsay, we cannot accept as true the Village Voice’s
assertion that this journey can be completed via “an easy ride on the PATH.”59 Nor
is there evidence that prospective New York diners would consider the trip routine.
However, we conclude that the New York restaurant scene’s embrace is sufficiently
broad to reach Newark, based on the paper’s selection of Terra Sul’s original Boi Na
Brasa restaurant as “Best Choice Churrascaria” in its “the best of nyc 2006”60 and
Terra Sul’s evidence that some of its customers live in New York.61
For all of these reasons, we find that BNB is entitled to register the mark
BOI NA BRAZA for restaurant and bar services throughout the United States
excluding the states of New Jersey and New York. We therefore grant BNB’s
motion to amend the application.
D. Terra Sul’s Unrestricted Applications
Should Terra Sul elect to do so, it may amend its unrestricted applications,
Serial Nos. 77813416 and 77813335, to add a concurrent use statement in the
following form:

58 Id. at 6.
59 Saleh Testimonial Deposition, Exhibit 22, TTABVUE 18 at 98; see also Terra Sul’s Notice
of Reliance, Exhibit D, TTABVUE 20 at 77.
60 Id.
61 See supra n.37; Saleh Testimonial Deposition, Exhibit 22, 18 TTABVUE at 98; Terra
Sul’s Notice of Reliance, Exhibit D, 20 TTABVUE at 77.
Concurrent Use No. 94002525

21

Registration limited to the area comprising the states of
New Jersey and New York pursuant to Concurrent Use
Proceeding No. 94002525. Concurrent registration with
Registration No. 2666968 and Application Serial
No. 77779339.62
See Trademark Manual of Examining Procedure (TMEP) § 1207.04 (October 2013).
Decision: BNB is entitled to a concurrent use registration for its identified
services. Application Serial No. 77779339 shall proceed to registration with the
following revised concurrent use statement, which will also be added to BNB’s
Registration No. 2666968:
Registration limited to the area comprising the entire
United States except the states of New Jersey and New
York pursuant to Concurrent Use Proceeding
No. 94002525. Concurrent registration with Terra Sul
Corporation a/k/a Churrascaria Boi Na Brasa.

62 Of course, should a concurrent use registration issue to BNB while Terra Sul’s
applications are still pending, the statement should be updated to reflect the eventual
registration number for BNB’s geographically restricted registration that will be based on
the involved application.