Scott Zoppoth has responded on behalf of his clients saying the full names of the Louisville restaurants were sufficiently different than the Mi Cocina name to prevent confusion.
Zoppoth also noted that the chain’s restaurants are located only in Texas and serve “Tex-Mex” style fare, while the Kentucky restaurants serve up authentic Mexican food in a completely different part of the country.
“In fact, patrons of my clients’ restaurants, in all probability, have no knowledge whatsoever of the existence of your client’s restaurants in Texas,” Zoppoth wrote.
Further quoting the Courier-Journal article published January 4, 2019, “The Parkway.Texas company behind a chain of Tex-Mex "Mi Cocina" restaurants is demanding two Louisville Mi Cocina dining spots to change their name because it's damaging its brand plus customers are getting confused.
Irving, Texas-based Mi Cocina — “my kitchen” in Spanish — is suing the two Louisville eateries in federal court, alleging trademark infringement.
‘Mi Cocina’s customers and the public have come to identify the mark MI COCINA with Mi Cocina’s excellent Mexican food and service,’ the suit reads.
In cease-and-desist letters sent to Louisville over the summer — included as exhibits in the lawsuit — the Texas company demanded the restaurants drop the name.
‘…in order to maintain the integrity of its marks, Mi Cocina actively polices them to prevent public confusion and dilution,’ the letter read, in part.
The Kentucky lawsuit is at least the seventh federal suit filed by the company in the last decade alleging trademark infringement, all of which ended in favor of the chain or a settlement, some of which appear to have resulted in a name change.
In 2009, the company sued a Texas restaurant that was using the name. The case settled within four months. In 2010, the company sued a Colorado restaurant, and the parties agreed to dismiss the case less than a year later.
In 2011, the company sued a Phoenix grocery store that served food under the name Mi Cocina Favorita. The case was settled.
In two different 2012 lawsuits, the company went after a New Jersey catering business that used the name, as well as a Texas man who ran the Mi Cocina Hondurena restaurant. Neither defendant responded to suit, and a judge ruled in favor of Mi Cocina.
Most recently, in 2014, the company sued a Colorado restaurant, which settled the case within two months.”
Credit: Reporter Matthew Glowicki for content originally published in the Courier-Journal.