La Calaca Feliz Sues Ambler’s Taco Feliz for Trademark Infringement

TacoFeliz

Taco Feliz is opening soon in Ambler, as indicated by this sign in the window, but it has nothing to do with Fairmount’s La Calaca Feliz, Fort Washington’s Cantina Feliz or Manayunk’s impending Taqueria Feliz, and the owners of those three restaurants are suing to protect their brand name.

On Tuesday, Timothy Spinner and Brian Sirhal of Feliz Restaurants, LLC filed a federal lawsuit against Taco Feliz, LLC and its owner, Rene Hernandez Zepeda, for trademark infringement and for the “passing off of Taco Feliz restaurant as one of the highly acclaimed Feliz Restaurants,” according to the suit.

The complaint mentions Craig LaBan’s review (three bells!) of La Calaca and Philadelphia magazine’s 2012 Best of Philly award for Cantina Feliz as evidence of the restaurants’ prominence in the region and says that “the Feliz Restaurants have made ‘Feliz’ a well-known brand of innovative Mexican cuisine” in the area.

Zepeda’s Taco Feliz will be less than two miles from Cantina Feliz, the brand’s flagship, and under twenty miles from the other two Feliz Restaurants locations. “The likelihood of confusion is unmistakable,” reads the suit. Zepeda also owns La Villa Mexican Grille in Skippack.

Before there was any talk of federal lawsuits, Michael Klein noted the “¿Mucha confusión?” over the name last week on Philly.com. Zepeda told Klein that he had “never heard of it”, referring to Cantina Feliz. But the plaintiffs aren’t buying that. “Defendants’ conduct is knowing, intentional, and egregious,” they claim, alleging that there’s no way Zepeda could be oblivious to their restaurants, since he’s in the exact same business, and because he lives very close to Cantina.

The thing is, Spinner and Sirhal don’t actually own any trademarks on their restaurant names just yet. They only submitted their applications on May 10th once the issue arose, applying for trademarks on the following: Cantina Feliz, La Calaca Feliz, Taqueria Feliz and Feliz Restaurants.

I reached out to Montgomery County attorney Shawn Farmer, an expert in trademark issues, for his take on the Feliz feud. “Absent smoking gun evidence of bad faith by the defendants, the outcome of this case will depend on the plaintiffs’ ability to prove that consumers strongly associate the ‘feliz’ term with their existing restaurants,” Farmer explains. “The defendants will likely counter that the ‘feliz’ term, and the English equivalent ‘happy’ term, are very commonly used in the restaurant industry and should only be afforded very narrow trademark protection.” Too close to call, says Farmer.

Zepeda declined to comment for this story. He suggested that I reach out to his lawyer, but then said that he couldn’t remember his lawyer’s name. “I’ll call you when I have it,” he promised.

[PHOTO: Courtesy Ambler 19002]

Be respectful of our online community and contribute to an engaging conversation. We reserve the right to ban impersonators and remove comments that contain personal attacks, threats, or profanity, or are flat-out offensive. By posting here, you are permitting Philadelphia magazine and Metro Corp. to edit and republish your comment in all media.

  • AmblerE

    Good for them for taking action. I work a block away from the new Taco Feliz at another restaurant and am a regular at Cantina Feliz. We have had countless customers and staff assuming this was a project from the gang at Cantina/Calaca. Hopefully it works out in their favor and Taco Feliz still opens under a different name because really, can you ever have to many tacos?

    • JA

      LOL, you work for Cantina and Calaca!

      • mitch

        dude, you dont have to work for them to see this as bogus. there is no way this guy has never heard of the feliz group of restaurants. its not like the chickies & petes crabby fry guy in maryland. brian & tim have worked their tails off to create a reputation of excellent food, ritas and service and this shouldn’t have their name slandered and their mission diluted by someone trying to cash in on their success!

  • Ldframbler

    Drove past this place the other day & have eaten at Cantina Feliz. I didn’t make any connection. Figured that’s a great sit down restaurant & this will be a taco joint. And I will be psyched to try it out!

  • http://www.scargosun.com/ Scargosun

    I immediately assumed that the Cantina Feliz was opening a taco stand when I saw the name in Ambler. You don’t open a biz without looking at the other businesses in the area, especially when you are in the Mexican food business. I am not buying his ‘never heard of it’ story.

  • tijuana

    This would be like a chinese restaurant copyrighting the word garden. Dude probably knows about them but they should have done it when they opened. No legs to stand on.

  • ErinR

    I live in Ambler and have never heard of any of the Feliz establishments or the coming soon one. But in reality, not that many upstart restaurants (or even the bigger more popular ones) stick around long in Ambler, so I wouldn’t bother spending the money for something that will be gone in a year regardless.

  • CM

    What a stupid lawsuit. It would be like The Happy Rooster trying to trademark “happy” and suing a bunch of Chinese restaurants. This also reminds me of the silly restaurant owner in Baltimore who tried to trademark “hon.” Now everyone in Baltimore hates her.

    • mitch

      not really…its more like if someone in university city or old city opened a hon dynasty or handy nasty

    • TM Atty

      Yeah, no. It’s not the same. For one, Happy Rooster does not serve Chinese food. More importantly, Feliz has established a small chain of Feliz-branded restaurants in that area. Taco Feliz is just trying to ride on those coattails.

      • CM

        “Feliz” branded? That’s hilarious. It’s exactly like claiming “happy” branded, or even “dynasty” branded. If someone opened a “Noodle Dynasty” in Old City, Han probably wouldn’t care. He would know that everyone would still go to Han Dynasty for noodles, regardless.

        • Dan

          How about Han Sichuan? You think he’d be cool with that?

        • opie

          cm, you are hilarious. its more like if an indian restaurant tried to use tashan hut or if someone opened a tackonellis pizza. you cant say its like happy…unless you speak spanish the name feliz in philly and montco is associated with cantina & la calaca. its 2 miles from their successful flagship store. the owner should be a big boy and change his name as they both fish from the same pond. nuff said

          • CM

            Well then, how about if Dave Frank and Stephen Simons sue over ‘Cantina’? Now that would be hilarious.

  • http://twitter.com/DreIsPaches Andre

    Pedro Feliz is looking into suing everyone.

  • Alimentarian

    They can always rename it Taqueria Distrito.

  • Mike

    I’ve contacted their trademark attorney and recommended that while they are at it, trademark the word “taco” and maybe “mucho gusto” just in case.

  • Tammy

    did Zepeda know about these other “feliz” restaurants? If so, then he should probably lose (because then he could have easily chosen another name). If he did not, then he should win. Google “taco feliz” and you will see there are dozens of Mexican restaurants with this name all over the country. Feliz restaurants can’t claim ownership of this restaurant name, especially since their trademark wasn’t registered.