UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

P.O. Box 1451
Alexandria, VA 22313-1451

Mailed: January 27, 2010

Concurrent Use No. 94002346

TOAST BAKERY CAFE, INC.

v.

TOAST UM, INC.

Before Seeherman, Drost and Ritchie,

Administrative Trademark Judges.

By the Board:

On October 22, 2003, Toast Bakery Cafe, Inc.

(“applicant”) filed an application based on Trademark Act

Section 1(a) seeking to register the mark TOAST BAKERY CAFE

(stylized, BAKERY CAFE disclaimed) for “restaurant and take-

out services specializing in breakfast items (such as eggs,

pancakes, waffles, French toast, fruit, breakfast meats and

bakery items); lunch (such as salads, sandwiches, soups,

burgers, appetizers, wraps and desserts); and beverages

(such as coffees, teas, smoothies, frappes, sodas, fruit

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juices and cocoa)” in International Class 43. Applicant

amended its application to seek a geographically restricted

registration for its mark, and to set forth the following

concurrent use statement:

1
Application Serial No. 78317003, based on Trademark Act Section 1(a),
and alleging a date of first use and date of first use in commerce of
October 24, 2002.
Concurrent Use No. 94002346

Subject to Concurrent Use Proceeding with Toast Um

Inc., 746 West Webster, Chicago, Illinois, 60614, Reg
No. 3061529. Applicant claims the exclusive right to
use the mark in the state of California.

Toast Um Inc. (“registrant”) owns Registration No.

3061529 for the mark TOAST (and design) for “restaurants and

contract food service” in International Class 43.2

The mark was published for opposition, and on September

22, 2008, the Board instituted this concurrent use

proceeding under the provisions of Trademark Act Section

2(d).

On October 8, 2009, the parties filed a stipulation for

concurrent use registration, accompanied by a copy of the

parties’ Settlement Agreement (“Agreement”) through which

applicant seeks to meet its burden of demonstrating that

concurrent use will not create any likelihood of confusion

under Trademark Act Section 2(d).

The parties’ Agreement provides, inter alia, that:

1) registrant shall have the exclusive right to use,

promote and license its mark throughout the United

States other than in the state of California;

2) applicant shall have the exclusive right to use,

promote and license its mark only in the state of

California, and shall not expand its use anywhere

outside of California;

2
Registration issued February 28, 2006 from application Serial No.
76530473, filed July 8, 2003.

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Concurrent Use No. 94002346

3) registrant has the right to expand use of its mark in

areas that may be viewed as geographically proximate

to applicant’s business area;

4) registrant’s registration may be amended to identify

its territory as comprising the United States except

for the state of California;

5) registrant will not adopt applicant’s existing

stylization, and any design elements, logos and

signage that applicant adopts will be sufficiently

different from registrant’s mark to avoid a likelihood

of confusion;

6) the parties will identify their respective markets in

marketing and advertising materials, will advertise in

their own territories, will not advertise in any

manner or publication that targets the other party’s

territory, and will use their distinctive design

elements and identify the city or state in which their

business operations are located;

7) the parties shall cooperate to modify their

advertising in the event that any advertising may

spill over into the other party’s territory.

Applicant meets the jurisdictional requirements for

concurrent use set forth in Trademark Act Section 2(d) inasmuch

as its asserted date of first use is prior to the filing date

of the application that issued as registrant’s Registration No.

3061529. See TBMP § 1103.01(a)(2d ed. rev. 2004). Also,

registrant consents to the grant of a concurrent use

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Concurrent Use No. 94002346

registration to applicant. See TBMP § 1103.01(b)(2d ed. rev.

2004).

Under the facts and circumstances of record, and in view

of the parties’ rights as established under their Agreement, we

find that applicant is entitled to the concurrent use

registration it seeks.

Accordingly, Toast Bakery Cafe, Inc. shall be granted a

geographically restricted registration based on application

Serial No. 78317003. Such application shall be amended to

include the following concurrent use statement: Applicant has

the exclusive right to use the mark in the area comprising only

the State of California.

Toast Um, Inc.’s involved Registration No. 3061529 shall

be amended to include the following statement: Registrant has

the exclusive right to use the mark in the area comprising the

entire United States, with the exception of the State of

California.