Terra Sul Corporation A/K/A Churrascaria Boi Na Brasav.Boi Na Braza, Inc.

Trademark Trial and Appeal Board

Jun 12, 2009

No. 92047056 (T.T.A.B. Jun. 12, 2009)

Mailed: June 12, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Terra Sul Corporation A/K/A Churrascaria Boi Na Brasa
v.
Boi Na Braza, Inc.
_______

Cancellation No. 92047056
_______

Eamon J. Wall of Wall & Tong, LLP for Terra Sul Corporation
A/K/A Churrascaria Boi Na Brasa

Remy M. Davis of Thompson & Knight LLP for Boi Na Braza,
Inc.
_______

Before Quinn, Kuhlke and Wellington, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Terra Sul Corporation A/K/A Churrascaria Boi Na Brasa,
petitioner, has petitioned to cancel Registration No.
2534608 owned by Boi Na Braza, Inc., respondent, issued on
January 29, 2002 for the mark BOI NA BRAZA for restaurant
services in International Class 42. The registration
includes the following translation: The English translation
of BOI NA BRAZA means OX IN EMBERS.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92047056
2
As grounds for cancellation petitioner asserts the
claim of priority and likelihood of confusion under Section
2(d) of the Trademark Act, 15 U.S.C. 1052(d). More
specifically, petitioner alleges that respondent’s mark BOI
NA BRAZA, as used in connection with its services, so
resembles petitioner’s previously used mark BOI NA BRASA for
restaurant services as to be likely to cause confusion, to
cause mistake, or to deceive under Trademark Act Section
2(d).
In addition, petitioner alleges that respondent’s mark
is “merely descriptive or deceptively misdescriptive of them
within the meaning of Section 2(e) of the Trademark Act,
primarily geographically descriptive of them within the
meaning of Section 2(e) of the Trademark Act, and/or
primarily geographically deceptively misdescriptive of them
within the meaning of Section 2(e) of the Trademark Act.”1
Petition to Cancel ¶ 6.
Respondent in its answer denied the salient
allegations.2

1 In its brief, petitioner appears to limit its argument to mere
descriptiveness and we consider any claims under Trademark Act
Sections 2(e)(2) and 2(e)(3) to be waived.

2 Respondent also asserted several affirmative defenses in its
answer; however, respondent did not pursue these defenses in its
brief and we consider them to have been waived.
Cancellation No. 92047056
3
EVIDENCE OF RECORD
The evidence of record consists of the pleadings
herein; the file of the registration sought to be cancelled;
trial testimony of Mr. Farid Saleh, petitioner’s owner and
president, with related exhibits, taken by petitioner;
respondent’s discovery responses and an official record from
the state of Texas submitted by petitioner under a notice of
reliance; and the discovery deposition of Mr. Saleh with
exhibits, and an official record from the state of New
Jersey submitted by respondent under a notice of reliance.
STANDING
As discussed below, petitioner has established
trademark rights in the mark BOI NA BRASA as used in
connection with restaurant services and has demonstrated a
real interest in cancelling the registration for the mark
BOI NA BRAZA. See Ritchie v. Simpson, 170 F.3d 1092, 50
USPQ2d 1023 (Fed. Cir. 1999); Jewelers Vigilance Committee,
Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed.
Cir. 1987); Lipton Industries, Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Thus, petitioner
has established its standing.
PRIORITY/LIKELIHOOD OF CONFUSION
The record shows and respondent does not dispute that
the marks BOI NA BRASA and BOI NA BRAZA are similar, the

Cancellation No. 92047056
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restaurant services are identical and the trade channels
overlap. In re E. I. du Pont de Nemours and Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In view thereof, we hold
that a likelihood of confusion exists between the marks BOI
NA BRASA and BOI NA BRAZA used in connection with restaurant
services.
The only issue in dispute is the question of priority
and petitioner’s trademark rights. Because petitioner has
not pleaded any registrations, petitioner must rely on its
common law use to prove its priority. Inasmuch as
respondent has not established use of its mark in connection
with its services prior to the filing date of the
registration’s underlying application, the earliest date
upon which respondent may rely for priority purposes is July
1, 1999. Thus, in order to establish priority, petitioner
must show that it used its mark in connection with its
services prior to July 1, 1999.
Mr. Saleh, petitioner’s owner and president, testified
as follows:
Q. From 1996 to the present time, has
Churrascaria Boi Na Brasa ever shut down?
A. No.
Q. From 1996 to the present time, has
Churrascaria Boi Na Brasa ever stopped doing
business at its current location in New Jersey?
A. No.
Q. From 1996 to the present time, has
Churrascaria Boi Na Brasa ever identified itself
by a different name to the public?
A. No.

Cancellation No. 92047056
5
Saleh Test. p. 48.

Q. When did Churrascaria Boi Na Brasa first use
this logo in association with its restaurant?
A. Since the day we open. It came out on the
menu and after that it came out – I don’t know how
you call that thing in the front of the restaurant
that we put on, canopy.
Q. Are you referring to a sign?
A. Yes, the sign, a design with a logo and the
name. I have pictures back home.
Q. When did Churrascaria Boi Na Brasa open?
A. April of 1996. ...
Q. What is Terra Sul Corp.?
A. The Terra Sul Corp. is a corporation that I
have opened and it owns Churrascaria Boi Na Brasa.
Q. When did Terra Sul Corp. acquire ownership of
Churrascaria Boi Na Brasa?
A. It was in 1999.
Q. Is Terra Sul a registered corporation?
A. Yes.

Saleh Test. p. 51.

A. Okay. From ’98 –actually ’99, Churrascaria
Boi Na Brasa Corp. owned Churrascaria Boi Na
Brasa. I was the president. In ’99, we changed
the corporation and I was the president, and then
it went to Terra Sul. However, this insurance
policy – so the period on this policy is until the
fifth month. So the next one probably – so to
tell you the truth, if I’m going to answer, now I
would say that Churrascaria Boi Na Brasa Corp. was
the owner until ’99 and as of 1999, we’ve created
another corporation that became the owner and I
was the president.
Q. And what was this corporation in 1999 that
became the owner?
A. Terra Sul Corp.

Saleh Test. p. 28

Q. And from June 14th, 1999 to June 14th, 2000,
who was the owner of Churrascaria Boi Na Brasa?
A. Terra Sul Corp, having myself as a president.

Saleh Test. p. 29

Q. What is Terra Sul Corp.?
Cancellation No. 92047056
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A. The Terra Sul Corp. is a corporation that I
have opened and it owns Churrascaria Boi Na Brasa.
Q. When did Terra Sul Corp. acquire ownership of
Churrascaria Boi Na Brasa?
A. It was in 1999.

Saleh Test. p. 51

A. Terra Sul Corp. was incorporated on January
19, 1999.

Saleh Test. p. 52.

Q. On July 19, 1999, was Churrascaria Boi Na
Brasa open for business?
A. Yes, it was.
Q. Was your restaurant Churrascaria Boi Na Brasa
open for business before July 19, 1999?
A. Yes.

Saleh Test. p. 63.

A. ... when we started the restaurant, it was
just myself, my wife, Paula, his wife, and my
wife’s sister. It was just the family.

Saleh Test. p. 76.

Q. But does Gullas Corporation own Terra Sul
Corporation?
A. I said that they are two different companies
and that I own both.
Q. Individually, you own the shares?
A. Yes.
Q. Does either of these two corporations have any
other shareholders besides yourself?
A. My wife but I’m the owner.
Q. So besides you and your wife, there are no
other shareholders?
A. No.

Saleh Test. p. 88.

This testimony establishes that the restaurant BOI NA
BRASA has been providing restaurant services since 1996 and
that it is currently owned and operated by petitioner Terra
Sul Corporation. It also establishes that the mark BOI NA
Cancellation No. 92047056
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BRASA has been and currently is displayed on menus and
signage. While petitioner did not submit a picture of the
sign or menus, respondent made one undated menu of record
which serves to corroborate petitioner’s testimony regarding
its use of the mark as depicted in the drawing in
petitioner’s Exhibit No. 17. Saleh Test. p. 49. The logo
depicted on the menu is shown below.

In addition, the testimony is supported by the
newspaper advertisements shown below dated September 1997
and November 1999. Saleh Test. Exh. No. 15.

Petitioner’s other exhibits, e.g., insurance policies,
checks, and a real estate lease, also serve to corroborate
Mr. Saleh’s testimony regarding the provision of restaurant
services under the mark BOI NA BRASA.
Cancellation No. 92047056
8
While the advertisements and drawings of the mark also
include a design element and the word CHURRASCARIA in close
proximity to BOI NA BRASA, CHURRASCARIA is the Portuguese
word for grill room or rotisserie,3 or barbeque restaurant.4
In view of the highly descriptive nature of the word
CHURRASCARIA, petitioner’s common law trademark rights lie
in the phrase BOI NA BRASA and, as such, the examples of use
in the record that depict BOI NA BRASA in conjunction with
the descriptive word are probative as to petitioner’s common
law trademark rights in BOI NA BRASA. While the evidence
also establishes common law rights in petitioner’s logo
mark, the wording creates a separate impression from the
design element and these examples of use support trademark
rights in the words alone.
We further find that the mark BOI NA BRASA is
inherently distinctive. Otto Roth & Co., Inc. v. Universal
Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981) While
the translation of the mark from Portuguese to English, OX
IN EMBERS, could be suggestive of the grill-style restaurant
services, without more, we cannot say that it is descriptive
of the restaurant services.

3 Compact Portuguese and English Dictionary (NTC Publishing
1997). The Board may take judicial notice of dictionary
definitions. University of Notre Dame du Lac v. J.C. Gourmet
Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).

4 Portuguese Concise Dictionary (Harper Collins 1998).
Cancellation No. 92047056
9
Respondent argues that both petitioner and the prior
user Churrascaria Boi Na Brasa Corporation (CBNBC) are New
Jersey corporations and under “New Jersey law, any mark,
registration or application for registration is assignable
with the goodwill of the business in which the mark is used.
The statute very clearly requires, however, that any such
assignment ‘shall be by instruments in writing duly executed
and shall be recorded with the Secretary of State upon
payment of the recording fee payable to the Secretary of
State.’” Br. p. 7.
The New Jersey statute provides:
Any mark and its registration or application for
registration shall be assignable with the good
will of the business in which the mark is used, or
with that part of the good will of the business
connected with the use of and symbolized by the
mark. Assignment shall be by instruments in
writing duly executed and shall be recorded with
the Secretary of State upon the payment of the
recording fee payable to the Secretary of State.
An assignment of any registration under this act
shall be void as against any subsequent purchaser
for valuable consideration without notice, unless
it is filed for recording with the Secretary of
State within 20 days after the date of the
assignment or prior to the subsequent purchase or
transfer.

N.J.S.A. 56:3-13.6(a).

Petitioner argues that the statute only pertains to
trademark registrations and not common law rights and points
to another section of the statute which provides:
Nothing herein shall adversely affect the rights
or the enforcement of rights in marks acquired in
good faith at any time at common law.
Cancellation No. 92047056
10

N.J.S.A. 56:3.13.
It is not clear if the New Jersey statutory code
requires that the transfer of common law trademark rights
between two corporations related by ownership in a few
family members must be in writing. The wording “any mark
and its registration or application for registration”
(emphasis added) combined with the wording that “any
assignment of any registration under this act shall be void”
suggests this section pertains specifically to registrations
or applications.
The record shows that it was the intent of Mr. Saleh,
the owner and president of CBNBC and petitioner and the
creator and operator of the restaurant BOI NA BRASA, to
transfer the trademark rights residing in CBNBC from 1996 to
1999 to petitioner, the new corporation operating the
restaurant, since 1999. We find that under the totality of
the circumstances presented that petitioner acquired the
trademark rights in BOI NA BRASA in 1999 and may rely on the
use, beginning in 1996, of the prior holder CBNBC. However,
we also find, in the alternative, that petitioner’s own use
of the mark BOI NA BRASA began during the spring or at the
latest June, 1999, which predates respondent’s July 1, 1999
first use date.
Respondent also attempts to undercut Mr. Saleh’s
testimony arguing that it is self-serving inasmuch as the
Cancellation No. 92047056
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witness is the president and owner of petitioner. In
particular, respondent contends that the testimony “has not
been clear about when the mark as first used, the alleged
transfer of the mark, and the ways his corporation allegedly
used the mark from 1996-1999.” Br. p. 15. Respondent
further contends that the testimony is contradicted by the
documentary evidence of record. Respondent relies, inter
alia, on petitioner’s filing for Registration of Alternate
Name with the State of New Jersey wherein petitioner states
in the form that it had not used the alternative name BOI NA
BRASA prior to January 16, 2007 and a trademark application
form for registration that was never filed with the USPTO
that names Mr. Saleh as the owner of the mark.
The testimony of a witness can be sufficient to prove
priority. See 3 J. Thomas McCarthy: McCarthy on Trademarks
and Unfair Competition § 16.06(2) (4th ed. 2005). We find
that the witness was competent to testify as to petitioner’s
use of the mark BOI NA BRASA in connection with its
restaurant and the testimony is not characterized by bias,
contradictions or inconsistencies. The testimony makes
clear that petitioner operated a restaurant prior to
respondent’s filing date, and the mark BOI NA BRASA
continues to be used by petitioner in connection with the
provision of restaurant services.
Cancellation No. 92047056
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The corporate documents and Mr. Saleh’s prior
statements made in a discovery deposition relied on by
respondent do not reveal contradictions or inconsistencies
as to the use of the mark BOI NA BRASA for a restaurant or
the ownership of the resultant common law trademark rights.5
The documents and any inferences to be drawn from them are
not sufficient to render Mr. Saleh’s testimony unreliable.
In view of the evidence and testimony presented as to
petitioner’s use prior to respondent’s July 1, 1999 filing
date, petitioner has established its priority with respect
to its common law rights in the mark BOI NA BRASA for
restaurant services.
Accordingly, petitioner has proven its claim of
likelihood of confusion under Section 2(d) of the Trademark
Act.
DESCRIPTIVENESS
Petitioner argues that respondent’s mark “is at most
descriptive and not suggestive once translated from
Portuguese into English. If the mark is eligible for
protection as a trademark, it must therefore have acquired
some level of secondary meaning among the relevant public.
Registrant Boi Na Braza has not produced or provided any
evidence of secondary meaning (no surveys, tests, polls or

5 The appropriateness of the statement made in the filing with
the state of New Jersey is not for us to decide. Its only
purpose here is its impact, if any, on Mr. Saleh’s testimony.
Cancellation No. 92047056
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other evidence).” Br. p. 14. Petitioner relies on the
following interrogatory responses from respondent:
...Boi Na Braza responds that the name “boi na
brasa” is a well known name that is often used in
Brazil. Based on their knowledge of the name from
its use in Brazil, the Matheus brothers chose this
name for their restaurant business and began
marketing the business as such at least as early
as July 1, 1999. The Matheus brothers changed the
“s” to a “z” to give the name more
distinctiveness.

Response to Interrogatory No. 16, Pet. NOR Exh. No. 1.

We begin by noting that under Section 7(b) of the
Trademark Act respondent’s registration enjoys the
presumption of validity and it is petitioner’s burden to
rebut that presumption not respondent’s burden to prove it.
By its argument and evidence, petitioner has not articulated
in what way the mark is descriptive or submitted evidence to
prove descriptiveness. Therefore, petitioner has not proven
its claim of descriptiveness under Section 2(e)(1) of the
Trademark Act.
Decision: The petition for cancellation is granted
based on the claim of likelihood of confusion under Section
2(d) and dismissed as to the claim of descriptiveness under
Section 2(e)(1).