Health Nut Cafe LLCv.New Health Nut Inc. aka Health Nut

Trademark Trial and Appeal Board

Mar 3, 2015

No. 94002599 (T.T.A.B. Mar. 3, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: March 3, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Health Nut Cafe LLC
v.
New Health Nut Inc. aka Health Nut
_____

Concurrent Use No. 94002599
_____

Drew T. Palmer of Crowe & Dunlevy PC,
for Health Nut Cafe LLC.
Steve Choi for New Health Nut Inc.
_____

Before Bucher, Zervas and Gorowitz, Administrative Trademark Judges.

On April 16, 2014, the Board instituted the present concurrent use proceeding
involving Health Nut Cafe LLC’s application Serial No. 85683949 for registration on
the Principal Register for concurrent use registration for the mark shown at
right for “restaurant and cafe services” in
International Class 43.1 Registration is sought
for the states of Oklahoma, Colorado, Kansas,
New Mexico, Texas, Arkansas and Missouri.

1 Application Serial No. 85683949, filed July 23, 2012, claims first use and first use in
commerce on December 1, 2007. The terms HEALTH and CAFÉ have been disclaimed.
Concurrent Use No. 94002599
-2-
The application names New Health Nut Inc., as an exception to Health Nut Cafe
LLC’s claim of exclusive use of the mark of application Serial No. 85683949. The
exception is for New Health Nut Inc.’s mark HEALTH NUT for restaurant and cafe
services and take-out restaurant services for the geographic area comprised of the
entire United States except Oklahoma, Colorado, Kansas, New Mexico, Texas,
Arkansas and Missouri.
On January 18, 2015, the Board added the following three applications into this
proceeding, all owned by New Health Nut Inc.:
Health Nut2 all for “restaurant and cafe services;
take-out restaurant services” in
International Class 43, and all for the
area comprising the entire United
States, excluding the states of
Oklahoma, Colorado, Kansas, New
Mexico, Texas, Arkansas, and
Missouri
3
4
On August 25, 2014, Health Nut Cafe LLC filed a “Joint Motion” to suspend
proceedings and to allow the Board time to review a “Settlement and Concurrent
Use Agreement” entered into between the parties on September 20, 2013 and
submitted with the “Joint Motion.”
The “Settlement and Concurrent Use Agreement” between the parties provides
for concurrent use by the parties of the marks in question within specified

2 Application Serial No. 85925810 filed May 7, 2013, claims first use and first use in
commerce on March 1, 1988.
3 Application Serial No. 85925834 filed May 7, 2013, claims first use and first use in
commerce on July 15, 2009.
4 Application Serial No. 85935889 filed May 17, 2013, claims first use and first use in
commerce on July 15, 2009. The term HEALTH has been disclaimed.
Concurrent Use No. 94002599
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geographical territories, and states in relevant part that (i) the parties are not
aware of any instances where one party’s use of its trademark has been the source
of any consumer confusion with the other party, and believe that their respective
uses of their marks permitted under the “Settlement and Concurrent Use
Agreement” are not likely to cause confusion in their separate geographical areas;
and (ii) each party will not use its mark for its services, and will not directly
advertise its mark, in the other’s geographic area, and will cooperate and take steps
to eliminate any instances of confusion.
Upon careful consideration of the “Settlement and Concurrent Use Agreement”
between the parties, which supports each party’s right to concurrent use
registration, the Board is persuaded that under the circumstances of this case,
concurrent use by the parties of their involved marks will not, in fact, be likely to
cause confusion.
In making its determination, the Board has taken into account not only the
provisions of the agreement and the actual geographic restrictions of the areas of
use, but also the voluntary entry by the parties into an agreement which includes
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, 842 F.2d 1270, 6 USPQ2d 1305 (Fed.
Cir. 1988).
Concurrent Use No. 94002599
-4-
DECISION:
1. Health Nut Cafe LLC is entitled to registration of its mark
for “restaurant and cafe services” in International Class
43 for the area comprising the states of Oklahoma, Colorado, Kansas, New
Mexico, Texas, Arkansas and Missouri.

2. New Health Nut Inc. is entitled to registration of the following marks,
each for “Restaurant and cafe services; Take-out restaurant services” in
International Class 43 for the geographic area comprised of the entire United
States except Oklahoma, Colorado, Kansas, New Mexico, Texas, Arkansas
and Missouri:

i. Health Nut (Application Serial No. 85925810);

ii. (Application Serial No. 85925834); and

iii. (Application Serial No. 85935889).