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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA744161
`05/04/2016
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`ESTTA Tracking number:
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`Filing date:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
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`Opposer Information
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`Name
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`La Bamba Licensing, LLC
`
`Granted to Date
`of previous ex-
`tension
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`Address
`
`Attorney informa-
`tion
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`05/04/2016
`
`1905 Glenn Park Drive
`Champaign, IL 61821
`UNITED STATES
`
`Bradley M. Stohry
`Reichel Stohry LLP
`212 West 10th Street Suite A-285
`Indianapolis, IN 46202
`UNITED STATES
`brad@rsindy.com Phone:3174238820
`
`Applicant Information
`
`Application No
`
`86588902
`
`Publication date
`
`01/05/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`05/04/2016
`
`VA Taco, LLC
`Suite G
`Falls Church, VA 22043
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`05/04/2016
`
`Goods/Services Affected by Opposition
`
`Class 043. First Use: 2012/10/04 First Use In Commerce: 2012/10/04
`All goods and services in the class are opposed, namely: restaurant and catering services
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`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
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`Mark Cited by Opposer as Basis for Opposition
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`U.S. Registration
`No.
`
`2141892
`
`Registration Date
`
`03/10/1998
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`LA BAMBA
`
`NONE
`
`Application Date
`
`06/14/1996
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Goods/Services
`
`Class 042. First use: First Use: 1989/01/15 First Use In Commerce: 1989/01/15
`restaurant, cafe, carry out restaurant and catering services
`
`Attachments
`
`La Bamba - Notice of Opposition re TACO BAMBA.pdf(276388 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Certificate of Service
`
`Signature
`
`/bms/
`
`Name
`
`Date
`
`Bradley M. Stohry
`
`05/04/2016
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of Trademark App. Ser. Nos. 86/588,902
`Filed on April 6, 2015
`For the mark TACO BAMBA TAQUERIA BY CHEF VICTOR ALBISU (and Design)
`Published in the Official Gazette on January 5, 2016
`
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`La Bamba Licensing, LLC,
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`Opposer,
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`VA Taco, LLC,
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`Applicant.
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`Opposition No.:______________
`
`NOTICE OF OPPOSITION
`
`
`
`La Bamba Licensing, LLC (“Opposer”) hereby opposes the above-referenced application
`
`to register the TACO BAMBA TAQUERIA BY CHEF VICTOR ALBISU (and Design) mark (the
`
`“TACO BAMBA Mark”) filed by VA Taco, LLC (“Applicant”). The grounds for opposition are
`
`as follows:
`
`THE PARTIES
`
`1.
`
`Opposer is an Illinois limited liability company with its principal place of business
`
`at 1905 Glenn Park Drive, Champaign, Illinois 61821.
`
`2.
`
`Applicant is a Virginia limited liability company with its principal place of business
`
`at 2190 Pimmit Dr., Suite G, Falls Church, Virginia 22043.
`
`OPPOSER AND ITS USE OF THE LA BAMBA MARK
`
`3.
`
`Opposer is the owner of the LA BAMBA trademark (the “LA BAMBA Mark”),
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`which Opposer uses to promote its popular of casual restaurants that serve Mexican-style cuisine.
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`4.
`
`Opposer is the owner of substantial trademark rights in the LA BAMBA Mark.
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`

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`5.
`
`Opposer owns U.S. Registration Number 2,141,892 for the LA BAMBA Mark (the
`
`“LA BAMBA Registration”), as well as other registrations for the LA BAMBA Mark and logos
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`that contain the wording “LA BAMBA.” The LA BAMBA Registration covers “restaurant, cafe,
`
`carry out restaurant and catering services.”
`
`6.
`
`Opposer has been using the LA BAMBA Mark to promote its restaurant services
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`since 1989. Since that time, Opposer has established extensive and valuable goodwill in the LA
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`BAMBA Mark and has spent significant amounts of time and money establishing this goodwill.
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`7.
`
`As a result of Opposer’s use of the LA BAMBA Mark, the LA BAMBA Mark has
`
`become valuable property of Opposer.
`
`APPLICANT’S TRADEMARK APPLICATION
`AND USE OF THE TACO BAMBA MARK
`
`8.
`
`
`Applicant filed its trademark application (the “Application”) for the TACO
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`BAMBA Mark on April 6, 2015.
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`9.
`
`The Application was published for opposition on January 5, 2016. Because
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`Applicant filed a Request for Extension of Time to Oppose, which was granted by the Trademark
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`Trial and Appeal Board, Opposer’s deadline to initiate an opposition was extended until May 4,
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`2016.
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`10.
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`The Application is a use-based application and covers “restaurant and catering
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`services” in Class 43.
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`11.
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`Applicant indicates that it began using the TACO BAMBA Mark in connection
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`with its services in October 2012.
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`Page 2
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`

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`GROUNDS FOR REJECTING THE APPLICATION
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`12.
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`Opposer’s actual, continuous, and continuing use of the LA BAMBA Mark in
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`commerce began over two decades before Applicant filed its Application and/or began using the
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`TACO BAMBA Mark.
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`13.
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`14.
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`The LA BAMBA Registration predates the Application by nearly two decades.
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`Applicant’s use and registration of the TACO BAMBA mark for the services listed
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`in the Application is likely to cause confusion, mistake, and/or lead to deception as to the origin
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`of Applicant’s services in violation of Sections 32 and 43(a) of the Lanham Act, 15 U.S.C. §§1114
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`and 1125(a).
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`15.
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`The likelihood of confusion is apparent in this instance because the dominant
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`portion of the TACO BAMBA Mark is the wording “TACO BAMBA.” The phrase “TACO
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`BAMBA” merely replaces the “LA” in “LA BAMBA” with the generic term “TACO.” Because
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`the “LA BAMBA” and “TACO BAMBA” phrases are highly similar, and both Opposer and
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`Applicant are using their respective trademarks in connection with restaurants serving Mexican-
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`style cuisine, consumers are likely to be confused as a result of Applicant’s use and registration of
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`the TACO BAMBA Mark.
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`16.
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`Applicant’s use and registration of the TACO BAMBA Mark is likely to result in
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`confusion and substantial damage and injury to Opposer. Persons familiar with Opposer’s LA
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`BAMBA Mark are likely to believe that Applicant’s services originate with, or are licensed,
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`sponsored or approved by Opposer. Any such confusion would inevitably result in loss of sales to
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`Opposer, and/or damage the goodwill and reputation that Opposer has established in the LA
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`BAMBA Mark.
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`
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`WHEREFORE, Opposer prays that the Application be rejected.
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`Page 3
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`

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`Respectfully submitted,
`
`
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`
`
`
`
`/Bradley M. Stohry/
`Bradley M. Stohry
`REICHEL STOHRY LLP
`212 West 10th Street
`Suite A-285
`Indianapolis, Indiana 46202
`(317) 423-8820
`
`Attorney for La Bamba Licensing, LLC
`
`By:
`
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`Dated this 4th day of May, 2016.
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`Page 4
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`

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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing was served upon the following by first-
`class United States mail, postage prepaid, on May 4, 2016:
`
`
`Janice Housey
`Symbus Law Group
`P.O. Box 777
`Berryville, VA 22611
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`By:
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`/Bradley M. Stohry/
`Bradley M. Stohry
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`Page 5

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