On March 19, Senior U.S. District Judge Harry Lee Hudspeth of the Western District of Texas in San Antonio signed a final judgment in a trademark case. The move came less than two months after Taco Taco Café Inc. filed its initial complaint in Taco Taco Café Inc. v. Fouad Hijazi, et al.
On Jan. 26, Taco Taco Café, which operates a restaurant named TACO TACO in San Antonio, filed a complaint against Fouad Hijazi and F&A Wireless Inc., which is the Dallas-based company for which Hijazi acts as an agent.
In its complaint, Taco Taco Café alleged that Hijazi and F&A Wireless operated two restaurants, one in Dallas and the other in The Colony, using the name Taco Taco, and had violated the trademark TACO TACO, which Taco Taco Cafe had registered in 2008.
Taco Taco Café also alleged in its complaint that it had received numerous awards from publications, including Bon Appetit magazine, recognizing it for serving “the best tacos in America” and “the best breakfast tacos.” The complaint alleged that the Dallas and The Colony restaurants operated by Hijazi and F&A Wireless confused the consuming public.
The complaint included claims of trademark infringement and unfair competition against both defendants and sought to bar Hijazi and F&A Wireless from using the name Taco Taco to operate restaurants and from applying for a trademark with that name.
In an answer filed Feb. 22, Hijazi, who represents himself in the litigation, denied all the allegations and wrote that was “totally unaware of a Taco Taco café in San Antonio at the time” he opened his restaurants and that he had “not intended to infringe on any one but rather started a small restaurant in good faith.”
He also wrote: “When picking a name for my business I did a search for Taco Taco in Dallas County and I was told by city employees that the name was available & was not registered to anyone in Dallas county. The name Taco Taco is not a known brand in Dallas metro area,” as the plaintiffs claim, he wrotes. But he wrote that his logo and menu items “are totally different” than that of the plaintiff. He wrote, “[W]e have not benefited in any way or intended in any way to copy or use the name Taco Taco. . . . ” He wrote he has expressed to the other side “my willingness to adopt some mark or name not confusingly similar to that used by” Taco Taco Café Inc., within a reasonable time.
Taco Taco Café filed an unopposed motion for settlement on March 15. The judge signed on March 19 the final judgment, which orders Hijazi and F&A Wireless to stop using the name Taco Taco for his restaurants within 30 days.
F&A Wireless did not file an answer and does not have an attorney listed on PACER, the federal courts’ online filing system.
Reached at his restaurant, Hijazi, who says he is also partner in F&A Wireless, says the litigation was resolved outside of the courtroom. Asked about what he plans to use as a new name, he says, “We’re working on it. We’re still working on it.”
Ted Lee, a shareholder in San Antonio’s Gunn, Lee & Cave, who represents Taco Taco Café, says, “Basically the other side agreed to change its name.” Lee adds about his own corporate client: “They are in the process of franchising, so this is very important to them.”
-- Miriam Rozen