Noah Chillingworth must've figured that if the secret menus wouldn't stop Christian Ziebarth once and for all, then the Wayback Machine would.
For the past five years, Ziebarth has run an online campaign to bring back the legendary Mexican fast-food chain Naugles; the mere mention of it to anyone who came of age in Southern California during the 1980s provokes endless paeans (go ahead: try it!). Ziebarth–a web developer by day–has organized pop-up restaurants featuring entrées such as Naugles' beef-and-cheese burritos, a cup of beans and ramekins of the chain's Cal-Mex salsa; all of it was eagerly devoured by hundreds of eaters and drooled over by tens of thousands of fans online. He argues that Del Taco–which had acquired the company in 1988 and finally shut it down in 1995–had let their Naugles trademark claim lapse, leaving him free to bring it back from the dead. Del Taco, however, doesn't agree; it has not only sent Ziebarth cease-and-desist letters, but the company is also fighting him through the Trademark Trial and Appeal Board for the U.S. Patent and Trademark Office.
That's where Chillingworth comes in. Del Taco's vice president of marketing submitted an affidavit to the board showing a print menu with the words “Viva Naugles Viva Del Taco,” which, he claims, proved Del Taco has maintained the trademark all these years later. He mentioned the existence of a secret Del Taco menu that carried Naugles items for those in the know and submitted 13 screenshots mentioning Naugles from previous Del Taco website incarnations kept on the Wayback Machine, the site that archives pages from across the world. Del Taco's filings confidently stated that the menus and Wayback Machine were “example[s] of advertising previously used by Del Taco in connection with its restaurant services, prominently featuring the Naugles mark.”
But Chillingworth underestimated Ziebarth's zeal. Under cross-examination by Ziebarth's attorneys, Chillingworth admitted he had never seen the print menu actually in use by Del Taco, while a three-judge panel brushed off the existence of the clandestine Naugles menu as meaningless to the case. As for the websites? All they did, according to the unimpressed judges reviewing the matter, was “merely recount the history of the merger” of Naugles and Del Taco, adding they were “clearly not advertisements.”
And with that, the Trademark Trial and Appeal Board found in favor of Ziebarth, who's now planning to restart Naugles in earnest. It's one of the best David-and-Goliath corporate stories to hit the Southern California food world in years and represents an embarrassment to Del Taco, which was recently sold for $500 million to Chicago investors.
But the battle could've been averted if Del Taco had just listened to Ziebarth in the first place.
The 44-year-old Huntington Beach resident grew up in Fountain Valley eating at Taco Bell and Mario's Mexican Food, but while visiting his grandparents in Joshua Tree as a high schooler, he had his first Naugles experience. Founded by former Del Taco employee Dick Naugle in 1970, Naugles quickly acquired a cult following thanks to its fresher taste. By the time Ziebarth tried the food in the mid-1980s, Naugles locations numbered in the hundreds across Southern California.
“All my friends at Fountain Valley High would go on and on about Naugles,” Ziebarth said over an appetizer of beans and chips at Taquería Zamora in Santa Ana. “After a while, I couldn't ignore it. So when I was with my grandparents, we went out to lunch. After just one bite of a burrito, I knew what everyone was talking about. I was addicted.”
That love affair, however, would last only a year. In 1988, Del Taco acquired Naugles and began either shutting down outposts or converting them into Del Tacos. A year later, Ziebarth went on a Mormon mission to Ireland. When he returned home, one of the first things he did was visit his favorite Naugles–on Brookhurst Street between Slater and Warner avenues–only to find it converted into a Del Taco. That, Ziebarth still remembers, was “a sucker punch.” The last one was shuttered in 1995, in Nevada.
Years passed. In 2005, Ziebarth began O.C. Mexican Restaurants, a blog on which he reviews local eateries. In August 2006, he posted a short remembrance of Naugles. It had such staying power–comments and search-engine referrals from across the world–that Ziebarth kept updating the post with old photos of Naugles hats and menu items and, finally, a petition asking Del Taco to bring back Naugles menu items.
That led to an invitation by a Del Taco PR person to lunch in 2008. There, Ziebarth suggested again that Del Taco bring Naugles items back, as his blog post showed there was a market for it. “She said it was a good idea and would take it back to her bosses,” Ziebarth recalls. “It felt good to spur them into thinking about this. My work was done.”
Instead, it seemed, Del Taco did nothing, annoying Ziebarth. He did research that indicated Del Taco had abandoned the Naugles trademark, leaving anyone to claim it and use it for business. So Ziebarth did just that. In 2010, he filed a petition with the U.S. Patent and Trademark Office to cancel Del Taco's claim to Naugles. He started tweeting under the @naugles handle in September 2011 with the simple sentence “yes, Naugles is getting ready to re-open . . . stay tuned for more information”. He gathered a team of business partners and food people to reverse-engineer the Naugles menu; the pop-ups started last year, going viral across Southern California and with a waiting list numbering into the thousands. All the while, Ziebarth and Del Taco fought it out on the legal front, with so many filings that the final ruling noted that “the trial record in this case is voluminous.”
Del Taco maintained all along that Ziebarth was little more than an obsessive foodie, that it always reserved the right to bring Naugles back. As proof, Del Taco legal filings point to sales of Naugles shirts on its website and the existence of the secret menu featuring old Naugles items including a bun taco and a Macho burrito. But on March 31, the judges sided with Ziebarth, saying all the evidence–the tweets, the blog posts, the pop-up restaurants–showed Ziebarth was not a “mere intermeddler, but has a real interest” in restarting Naugles and that Del Taco hadn't shown the same interest until Ziebarth came along.
It was a hell of a week for Ziebarth, who also proposed to his girlfriend (she said yes). But he isn't resting easy.
“What this news means is that Del Taco's registration of the trademark will be canceled,” Ziebarth says. “Now my registration gains precedence. Once we show it to be in use–which we already sort of have–then we can get my registration finalized. There's a chance Del Taco can appeal, but maybe the new owners won't want to bother.”
And how does he feel?
“To quote James Brown, 'I feel good,'” he says. “Then I imagine Han Solo saying to me, 'Great, kid. Don't get cocky!'”