‘Gringo’ lawsuit heartburn for mom-&-pop restaurant
Regional Tex-Mex chain sues, claims name may confuse customers
Gringo’s Mexican Kitchen, the Houston Tex-Mex chain with 10 locations and counting scattered around the suburbs, has filed a trademark infringement lawsuit against Habanera and the Gringo, a year-old mom-and-pop Mexican restaurant near Hobby Airport on the Gulf Freeway.
According to Gringo’s attorney John “Rocky” Rawls of Baker Williams & Matthiesen, who is representing Ybarra Interests in the suit, the issue is his client’s 20-year history with the name — the company was founded by Russell Ybarra in 1993 — and the potential for Habanera and the Gringo’s name to cause confusion on the part of consumers. In addition to trademark infringement, the complaint also cites “unjust enrichment” and “unfair competition.”
The filing claims the owners of Habanera and the Gringo “included ‘Gringo’s’ [sic] in the name of defendant’s new restaurant as part of a scheme to misappropriate the goodwill plaintiff has developed in its mark.”
Habanera and the Gringo partners Vanessa Lomeli and her fiance, Ben Downing, say they’re prepared to fight for the right to use their idiosyncratic name.
Ironically, in picking a name for the restaurant Lomeli and Downing were focused on the commonly used “Habanero” variant they were considering, because there are several Mexican restaurants in Houston featuring that hot-as-blazes chile pod in their name. “There’s Habaneros Mexican Grill, Habaneros Tex-Mex, Habaneros Tacos,” says Lomeli, “so we intentionally went off the wall to find a silly name that would set us apart.”
Lomeli and Downing joked that she was the “Habanera” of the pair, because she was, as she puts it, “little and feisty,” like the Yucatecan chile that “is small but can kick your (expletive).” Downing was the “Gringo.” Lomeli wanted them both in the name.
For awhile, all was well. But in late October, a positive review of Lomeli’s food and drinks drew the attention of the Gringo’s chain. At the end of November a certified letter from the company’s in-house counsel arrived asking Lomeli to drop “Gringo” from the name or face a lawsuit.
Lomeli’s first reaction to the letter was succinctly habanera- like: “This is B.S.,” she recalls thinking.
Now she and Downing, having refused to budge, must contemplate how to proceed in a legal process they can ill afford. Given their restaurant’s barebones linoleum and tatty acoustical ceiling tiles, its battered leatherette barstools and Formica tables, they’re not in a position to hire the sort of boutique law firm with a specialty in trademark litigation that represents Gringo’s. They’ve sunk every cent into just getting the restaurant off the ground.
For Gringo’s part, attorney Rawls explains that while the Gringo’s name is not federally trademarked per se, 20 years of use by his clients as they built their business makes the name theirs by common law, an additional basis on which trademark infringement cases can be argued.