In August 2019, Panda Express sent a cease and desist letter to a Gilbert, Arizona-based restaurant, Panda Libre, which offers “Mexican and Asian Fusion” cuisine. In this correspondence, the fast food giant advised Panda Libre of its trademark rights and demanded that it cease using the mark, PANDA LIBRE. The proprietors of Panda Libre failed to respond to this letter in writing. However, attorneys on behalf of Panda Libre advised Panda Express’ counsel that it is unwilling to change its name and intends to continue use of the same.
Panda Express was originally founded in 1973 as “Panda Inn.” The “panda” concept of the restaurant was inspired by the emerging friendship between the United States and China at the time, which was symbolized by two panda bears, Ling-Ling and Hsing-Hsing. The two famous pandas were provided as gifts to people of the United States by China after President Nixon’s historic 1972 visit, which marked the culmination of the Nixon administration’s resumption of harmonious relations between this country and mainland China after years of diplomatic isolation. In 1983, “Panda Express,” the fast-service version of the Panda Inn, was opened and within ten years, there were nearly one hundred Panda Express restaurants. Now, Panda Express is the largest Asian-American restaurant chain and family-owned restaurant in the United States with nearly 2,000 stores.
Panda Express currently possesses over thirty federal trademark registrations. Indeed, the chain owns registration for PANDA, PANDA EXPRESS, PANDA PANDA, PANDA CAFÉ, GREAT PANDA, PANDA MANIA, PANDA KIDS, PANDA KITCHEN, and others. Moreover, several of Panda Express’ marks have acquired incontestability status due to their length of use. The restaurant claims to have expended significant resources to advertise its service and acquired substantial goodwill in its brand, including its marks. According to the complaint, of its offerings, Panda Express invented the “orange chicken burrito,” after introducing “The Original Orange Chicken” to the United States market in the late 1980s. Panda Express also asserts that this product was widely publicized as being an exclusive item.
Last week, Panda Express filed a lawsuit in the United States District Court for the District of Arizona alleging federal trademark infringement, false designation of origin, unfair competition, federal trademark dilution, and unfair competition. In order to prevail, the restaurant chain will need to demonstrate that consumers are likely to be confused, mistaken, or deceived as to the source or origin of the goods or services offered by Panda Libre in that consumers are likely to believe or assume that Panda Libre is sponsored by, affiliated with, or otherwise connected to Panda Express. In assessing this likelihood of confusion, courts analyze several factors including the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; relatedness of the goods or services offered by the parties; similarity or dissimilarity of established, likely-to-continue trade channels; and the conditions under which the sales are made.
Because Panda Express filed its complaint mere days ago, Panda Libre has yet to file an answer thereto. Pursuant to the Federal Rules of Civil Procedure, Panda Libre is allowed twenty-one days from being served with the summons and complaint within which to file a responsive pleading. In its response, Panda Libre will either admit or deny the allegations asserted by Panda Express and state in short and plain terms its defenses, if any, to each of the asserted claims. While Panda Libre did not formally respond to Panda Express’ written threats, it seems doubtful the single-location establishment will admit the restaurant chain’s allegations. Instead, Panda Libre owner, Paul Fan, has expressed his dismay with the lawsuit on the restaurant’s social media accounts indicating that it will “hold on as long as [they] can” but that the litigation “has put a heavy burden” on Fan and his family.