Panda Express might sue a Gilbert restaurant
Panda Libre is a nod to his parents’ former restaurant, Panda Cafe.
But the restaurant’s name and logo are causing trouble for his business.
Less than a year after opening the restaurant at 748 N. Gilbert Road, Fan received a cease-and-desist letter from Buchalter, a law firm representing Panda Restaurant Group, the parent company of national fast-food chain Panda Express.
In the letter dated Aug. 5, 2019, the law firm claims Panda Libre violates
● federal law with its unauthorized use of “Panda” trademarks. Now Fan has hired a lawyer and decided to push back.
“We’re just a small mom-and-pop place, just one restaurant, barely open a year,” Fan said. “To just continuously having to fight this is really frustrating.”
Fan likes to call the food at Panda Li
bre “infusion” because he marinades the proteins, including carne asada and barbacoa, with an infusion of Mexican and Asian spices.
The casual eatery, which sits on the southwest corner of Gilbert and Guadalupe roads, serves burritos, bowls and tacos. Guests can get a burrito with beef bulgogi, or chow mein with chorizo. There’s an alcohol menu, as well as specialty drinks including jamaica and horchata boba.
Fan and his wife Nicole both work at the restaurant. He liked the name Panda Libre because of the words’ association with Asian and Mexican cultures, Fan said. The ‘panda’ part comes from a Chinese restaurant his parents opened in 1983 in Springville, Utah.
The restaurant was called Panda Cafe and there’s a photo of it on Panda Libre’s website and Facebook page.
“All I really want is to be able to keep my name still,” Fan said. “It’s something really cool when people ask why I opened a restaurant.”
Why Panda Express is threatening legal action
The same year Fan’s parents opened a restaurant, the Cherng family opened the first Panda Express in a mall in Glendale, California. By 1993, Panda Express celebrated its 10th anniversary by opening its 100th restaurant, according to the company’s website.
Today Panda Express has become a global empire, known for its orange chicken, cafeteria-style service and recognizable panda logo. Panda Restaurant Group has owned the trademark to “Panda Express,” “Panda Inn” and other iterations since the 1980s.
In 2001, the company trademarked “Panda,” but only for Chinese fast food restaurant and take-out services. Then on May 31, 2019, the company filed for the “Panda” trademark for restaurant services in general, including cafe and catering, according to records from the U.S. Patent and Trademark Office.
Panda Libre had already registered the “Panda Libre” mark on May 7, 2019.
A few months later in a cease-anddesist letter, Panda Restaurant Group demanded Panda Libre stop using “Panda Libre” on all signs, displays and menus because usage would be “likely to cause confusion or dilution in the marketplace.”
Panda Restaurant Group also demanded Panda Libre withdraw its pending application to trademark its logo and voluntarily surrender registration of the “Panda Libre” mark.
If Panda Libre does not comply, Panda Restaurant Group threatened to file a federal lawsuit for infringement, among other legal actions.
“We are confident that Panda would prevail in a lawsuit given its superior and longstanding prior rights in the mark, and that Panda would be entitled to a substantial monetary award by court,” reads the letter signed by Farah P.
Bhatti, an attorney at Buchalter.
The Arizona Republic has reached out to Bhatti for comment but did not hear back.
Does Panda Express have a good case?
Companies are very protective of their brand, said Eugene Vamos, a Tucson-based attorney who focuses on intellectual property matters. Vamos represents neither party in the case.
“All product purchasing is emotional,” Vamos said. “They don’t want other people sticking their fingers in their trademark, their brand.”
While the owners of the “Panda” trademark have the rights for restaurant services, they can’t exclude other companies for using the word “Panda” in other goods and services such as telephones and cars, he clarified.
Vamos thinks “Panda Express has enough of a case to make Panda Libre sweat,” but it has less to do with the legal merits and more about whether the involved parties have the financial resources to litigate it out.
Companies with large budgets can go after anything that comes close to their brand. Small companies usually don’t have the money, time or willingness to go that far, and it’s usually cheaper for them to try to cancel their trademark, he explained.
Ultimately, it comes down to whether a consumer would confuse the two marks, he said.
‘We woke up an 800-pound gorilla’
Since Fan posted about about the dispute on Facebook on Jan. 2, his supporters have shared words of support for Panda Libre, even announcing plans to boycott Panda Express.
“I have never had one single person come in and say, ‘Oh, I thought you were Panda Express or I thought you were a spin-off of Panda Express,’” Fan said.
Fan contested the idea his restaurant bears a confusing similarity to Panda Express because the two businesses have different concepts, food and logo, he said.
If forced to change his restaurant’s name and logo, he’ll have to close the restaurant temporarily to start over again with a new name and art, he said. Hiring a lawyer to get involved has also been an expensive process, he admitted.
“(Panda Express is) very, very angry with me right now because I posted something about it,” Fan said. “From the sounds of it, we woke up an 800-pound gorilla.”