Greens & Grains, LLCv.green and the grain LLC

Trademark Trial and Appeal Board

Jun 26, 2020

94002947 (T.T.A.B. Jun. 26, 2020)

Mailed: June 26, 2020

Concurrent No. 94002947
Greens & Grains, LLC1

v.

green and the grain LLC

Before Pologeorgis, Coggins, and Dunn,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Greens & Grains, LLC seeks to register the standard character mark GREENS &
GRAINS for “fast-food restaurant services” in International Class 43.2 The
application recites Greens & Grains, LLC’s area of use as comprising “the entire state
of California, excluding all areas outside of California.” Greens & Grains LLC has
named green and the grain LLC as an exception to its exclusive right to use its mark.

1 The Board’s institution order inadvertently reversed the parties in the proceeding caption.
The caption in this decision corrects this inadvertent error. Greens & Grains, LLC, as the
party whose application has the latest filing date, is the junior party and therefore stands in
the position of plaintiff. See Trademark Rule 2.116(b), 37 C.F.R. § 2.116(b); TRADEMARK
TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 1108 (2020).
2 Application Serial No. 88585552, filed on August 20, 2019, based on an allegation of use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. 1051(a), claiming May 15, 2012
as both the date of first use and the date of first use in commerce.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Concurrent Use No. 94002947

2
green and the grain LLC is the owner of three pending applications for the marks
identified below, each for “Catering services; Mobile restaurant services; Restaurant
services; Take-out restaurant services” in International Class 43:
1. GREEN + THE GRAIN (in standard characters);3
2. ;4 and
3. .5
Each of the three applications identify Greens & Grains, LLC as an excepted user
and identify green and the grain LLC’s area of use as comprising “the entire United
States and its territories except the entire state of California.”
On June 22, 2020, the parties filed a concurrent use agreement involving their
respective marks in which the parties identify Greens & Grains, LLC’s geographic
area as “limited to California” and agree that green and the grain LLC “has not and
will not use [its m]arks in California.”6

3 Application Serial No. 88031178, filed on July 10, 2018, based on an allegation of use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. 1051(a), claiming May 30, 2014
as both the date of first use and the date of first use in commerce.
4 Application Serial No. 88031185, filed on July 10, 2018, based on an allegation of use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. 1051(a), claiming April 9, 2015
as both the date of first use and the date of first use in commerce.
5 Application Serial No. 88031190, filed on July 10, 2018, based on an allegation of use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. 1051(a), claiming April 9, 2015
as both the date of first use and the date of first use in commerce.
6 3 TTABVUE 3.
Concurrent Use No. 94002947

3
Upon careful consideration of the agreement between the parties, which supports
each party’s right to a concurrent use registration, the Board is persuaded that under
the circumstances of this case, concurrent use by the parties of their involved marks
is not likely to cause confusion.
In making this 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 entrance 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 N.Y. v.
Amalgamated Trust & Savings, 842 F.2d 1270, 6 USPQ2d 1305 (Fed. Cir. 1988). In
particular, the Board notes that the parties have agreed, inter alia, that “[i]f either
party becomes aware of or is informed of confusion arising from the uses
contemplated by this Agreement, it will promptly inform the other Party of such
confusion, and both Parties will promptly and in good faith confer and cooperate with
each other to work out appropriate steps to eliminate or minimize confusion.”7 The
parties have also agreed that they may use their respective marks concurrently for
their respective services without a likelihood of confusion based on (a) the geographic
limitations set forth in the agreement, and (b) the fact that the concurrent use of the
parties’ marks in separate geographic locations for the past five years has not resulted
in any confusion.8

7 Id.
8 Id.
Concurrent Use No. 94002947

4
DECISION:
Accordingly, the parties are adjudged entitled to the following concurrent use
registrations:
Greens & Grains, LLC is entitled to a registration based on its
Application Serial No. 88585552 for the standard character mark GREENS &
GRAINS for “fast-food restaurant services” in International Class 43 for the area
comprising “the entire state of California, excluding all areas outside of
California.”
green and the grain LLC is entitled to registrations based on its
application Serial Nos. 88031178, 88031185, and 88031190 for the marks
GREEN + THE GRAIN (in standard characters), , and ,
respectively, all for use in connection with “Catering services; Mobile restaurant
services; Restaurant services; Take-out restaurant services” in International Class
43 for the area comprising “the entire United States and its territories, except
the entire state of California.”