Iowa City taqueria changes name after trademark infringement

An Iowa City Mexican restaurant isn't going anywhere, but its name has.

La Michoacana, a taqueria and meat market tucked in a strip mall along Highway 1 in southwest Iowa City, changed its name after a Texas grocery store chain with the same name said it would take legal action for infringing on its trademark.

The Iowa City restaurant has already changed its name to La Regia and a sign has been mounted outside the business. Jose Garcia, the restaurant's owner, said they will complete all necessary changes by the end of next week.

Garcia said he first received a cease and desist letter at the end of 2013 from the Houston-based business, La Michoacana Meat Market. Garcia wasn't familiar with trademark law and wasn't sure what to do.

'I didn't think I could get in trouble by using the name,” Garcia said.

La Michoacana Meat Market in Texas has several federal trademarks registered with the United States Patent and Trademark Office. The company did not return calls seeking comment on Thursday.

The Texas company is a chain of Hispanic supermarkets founded in 1986, according to its website. The company has more than 100 stores across Texas and parts of Oklahoma.

Garcia said he hired Brett Trout, a Des Moines-based intellectual property lawyer who advised the best course of action was changing their name.

Jason Rantanen, University of Iowa associate professor of law with expertise in intellectual property, said having a registered federal trademark gives a business the right to use it in connection with goods or services for which it is registered anywhere in the US.

Rantanen said he strongly encourages any business owner to consult with an intellectual property lawyer before launching into a business.

'A lot of people don't and then they run into problems that end up costing them more money,” he said.

Avoiding trademarks can be costly in a variety of ways, Rantanen said. Costs include selecting a new name, the price of changing signage and marketing, consulting an attorney to ensure the new name is usable and protectable and legal costs if a business decides to fight the contention in court.

There are also intangible costs such as loss of goodwill, he said, such as name recognition and reputation that's developed among patrons and the community in regards to its service.

Garcia opened up his restaurant as La Michoacana in 2012 after several years as a taco truck and the name was a nod to his family's roots in Mexico's Michoacán region.

Garcia said he chose La Regia, which means woman from Monterrey, Mexico, where his wife is from. Garcia said he's in the process of submitting federal registration for the new trademark and has checked to make sure it's not taken. He said he's hoping the change won't have a significant impact on customers.

'People have been asking about the name change but I don't think they mind, they just want to get their hands on the tacos,” Garcia said.