Stubb’s B-B-Q files retaliation in conflict over name
January 22, 2016 - bbq set
The authorised conflict between a owners of Stubb’s restaurants and a makers of Stubb’s grill salsas doesn’t demeanour like it’s going away.
In fact, it’s removing bigger – and messier.
The Stubb’s grill sauces, rubs and marinades were sole final year in a $100 million deal.
One World Foods Inc., a association behind Stubb’s sauces, rubs and marinades, filed a lawsuit late final year in U.S. District Court claiming Stubb’s Austin Restaurant Co.’s enlargement skeleton would lead to consumer difficulty and constituted heading infringement.
One World Foods was purchased final year by piquancy builder McCormick and Co. in a understanding valued during $100 million.
At emanate are dual new Stubb’s catering operations – one already open during Graceland Grocery, 8600 W. U.S. 290, and one reportedly in a works during Lala’s Little Nugget, 2207 Justin Lane – that One World Foods says aren’t lonesome by a longstanding “oral license.”
The Stubb’s Bar-B-Q during 801 Red River St. in downtown Austin and a Stubb’s catering operation during Mean Eyed Cat, 1621 W. Fifth St., are a usually dual locations lonesome by that verbal license, One World Foods has said.
Now, in a retaliation filed this week, Stubb’s Austin Restaurant Co. alleges astray competition, heading dilution and unfair enrichment. It also seeks to cancel during slightest some of a registrations for Stubb’s-related trademarks that have been claimed by One World Foods.
“In early 1996, One World Foods (doing business as Stubb’s Legendary Kitchen) authorized a arrangement of Stubb’s Austin Restaurant Co., commencement a scarcely two-decade, pacific coexistence between a companies,” a retaliation states. “At no indicate in 1996 or afterward did One World Foods or anyone on a interest extent Stubb’s Austin Restaurant Co. by a permit agreement, verbal or otherwise. Rather, any party’s use has been but geographic reduction or control by a other party.”
Stubb’s Austin Restaurant Co. says in a filing that a dual companies are not in approach competition, with both portion opposite audiences.
“Throughout a parties’ coexistence, One World Foods (with a believe in a prepared-food industry) has used a symbol Stubb’s for grill sauce, marinades, rubs and associated goods, while Stubb’s Austin Restaurant Co. (with a believe in a grill and party businesses) has used a symbol for restaurant, catering, entertainment, live song and associated services.”
Stubb’s Austin Restaurant Co., by a long-term use of a Stubb’s name, “has acquired profitable common law rights,” a lawyers say.
“Since 1996 and stability until a benefaction time, One World Foods has not exercised or attempted to practice control over a restaurant, catering, party and live song services offering by Stubb’s Austin Restaurant Co. underneath a symbol Stubb’s,” a retaliation states. “In contrariety to Stubb’s Austin Restaurant Co.’s open and honest enlargement with One World Foods’ believe and encouragement, One World Foods – unbeknownst to Stubb’s Austin Restaurant Co. – filed countless heading applications for a symbol Stubb’s in Stubb’s Austin Restaurant Co.’s available margin during this time period.”
Stubb’s Austin Restaurant Co. is requesting a jury trial. A justice date has not been set.