A showdown between two tortilla slingers has ended with a judge ordering Mission Burritos to make concessions to a Mexican company that sells food products under a similar name.
Houston-based Mexican Restaurants, which operates four Houston-area Mission Burritos, must post disclaimers on all labels, signs, prints, packages, wrappers, advertisements, websites and menus that it is not affiliated with Gruma Corp., the maker of Mission-brand tortillas, chips and other food products sold in grocery stores.
A federal judge ordered the move in September, resolving a 4-year-old trademark-infringement lawsuit by Gruma. The permanent injunction also ordered a fifth Mission Burrito outlet, in Sugar Land, to stop using the name and logo altogether.
Mexican Restaurants this week shuttered the Sugar Land restaurant, although the company's attorney called the closure "a business strategy decision" that had nothing to do with the settlement.
"We are pleased with the outcome of this case," attorney Barry Flynn said. "We have already taken the initiative to put up what we think are reasonably conspicuous disclaimers. It doesn't affect our operations at all."
Gruma filed suit in September 2009 alleging the Mission Burritos name and logo infringed on its trademarked Mission-brand packaging, which usually features a bell and bell tower depicting a Spanish mission.
"Given the fame of the Mission brand for Mexican food products, it is inevitable that the use of the name Mission Burritos by defendant will result in confusion of the purchasing public, who both eat at defendant's restaurants and buy Gruma's Mission brand food products," the lawsuit charged.
When the case went to trial in the Sherman division of U.S. District Court for the Eastern District of Texas in January 2011, a jury sided with Mexican Restaurants. Judge Michael Schneider later ruled that the restaurant chain's logo neither infringed on nor diluted Gruma's trademark.
But the 5th U.S. Circuit Court of Appeals found in Gruma's favor on appeal.
In a current permanent injunction issued Sept. 27, Schneider found Mexican Restaurants' Texas trademark for Mission Burritos issued in August 1997 infringes on Gruma's Mission trademarks and should be canceled.
Nevertheless, the judge ruled that Mexican Restaurants may continue to use the Mission Burritos name and logo in its four Houston-area restaurants that opened prior to April 2009, when Gruma asserted its rights to the Mission trademarks.
Those restaurants include two in Houston, one in Katy and one in Atascocita.
The Sugar Land location, however, did not fall under the exemption and was ordered to cease using the name and logo.
On its last day of business on Oct. 31, Mission Burritos in Sugar Land was displaying the notice required at the other four restaurant locations, stating that it did not use and was not affiliated with Mission Brands products or Gruma Corp.