San Diego Trademark Attorney® Blog

Fifth Circuit Says Mission Burrito Trademark Suit Has Legs

October 16, 2012

burrito.jpg San Diego - The Fifth Circuit on Thursday ruled that Mexican food company Gruma Corp. has valid claims for trademark infringement against the Texas fast food chain Mission Burrito, reversing a Texas district court's dismissal of Gruma's case.

Gruma, which markets its products nationwide under the Mission trademark, sued Mission Burrito owner Mexican Restaurants Inc. in September 2009 for infringement and dilution. The district court ruled that there was no likelihood of confusion between the two trademarks and no dilution, and tossed Gruma's complaint.

The district court erred in its legal analysis of the claims, and proper application of the relevant factors favors Gruma, the appeals court ruled.

Gruma's Mission products include tortillas, tortilla chips, taco shells, guacamole dip, and salsa. The company has obtained 29 federally registered trademarks for the Mission brand since 1982. The Mission logo includes the word under a Spanish-style bell tower with a rounded top, usually in red, orange and white.

Mexican Restaurants, meanwhile, owns several different Mexican concept restaurants in Texas and elsewhere, including the Houston-based Mission Burrito restaurants, which first started in 1995 and obtained a Texas trademark in 1997. The restaurants are considered fast-casual and serve tortilla chips, dips and salsa, and fresh tortilla- based Mexican food items such as burritos, tacos, and quesadillas.

The Mission burrito logo is the top of a Spanish mission style church topped by a cross in black and white. Mexican Restaurants obtained a federal trademark for the logo and name in 2008.

The district court correctly found that four of the relevant factors favored Gruma, but misapplied the law relating to two others and erred in not fully analyzing two more which should be at least neutral, if not in Gruma's favor, the company argued on appeal.

The appeals court agreed, noting the visual similarities between the two trademarks.

"We find it inescapable that both are clearly employing the device of a mission-style tower associated with Mexico and South Texas to draw an association with the name Mission and the Mexican food each party sells," the Fifth Circuit said.

The restaurant business could also be a natural area of expansion for Gruma, thus increasing the likelihood of confusion, the appeals court ruled, in contradiction to the district court's finding.