In spite of a few recent hiccups, Chipotle has done pretty well in the Mexican food market. Now, the Denver based company wants to expand its business to include a burger chain. The name and logo the group chose may be problematic though, as a Boston based burger chain says that the branding infringes on its trademark.
Tasty Burger opened its doors in 2010 and has since expanded to 6 locations in Massachusetts and Washington D.C. The chain has done a fair amount of advertising and even became the official burger of the Boston Red Sox. The group wisely applied for trademark protection on its name and logo early on, but because the name Tasty Burger is essentially descriptive of the product, the application was rejected by the Trademark Office as “merely descriptive”. Trademarks that are generic or descriptive of the product or service being offered are not registerable on the Trademark Office’s Principal Register. Descriptive marks, though, are registerable on the Supplemental Register.
There are some important differences between the Principal and Supplemental Registers. The Principal Register offers the registrant full trademark rights. While the Supplemental Register on the other hand does not convey the same presumptions of validity, ownership and exclusive rights to use the mark offered by the Principal Register.
A supplementation registration does have value however. A supplemental registration entitles the owner to use a notice of federal trademark registration, such as the ® symbol and gives the owner the right to bring a trademark infringement suit in federal court, along with a claim of unfair competition.
After Tasty Burger’s application was rejected on merely descriptive grounds, the group filed for supplemental registration, which was granted in 2012. With Chipotle’s announcement of its burger chain being called Tasty Made and subsequent trademark application on a logo that bears some similarity to Tasty Burger’s, Tasty Burger sent a cease-and-desist letter to Chipotle citing its supplemental registration. Tasty Burger claims the letter has gone ignored. To further bolster its brand protection, Tasty Burger also took the step of filing a new trademark application on its logo seeking registration on the Principal Register based on a claim a claim of acquired distinctiveness under Section 2(f) of the Trademark Act.
Section 2(f) of the Trademark Act allows an applicant to submit evidence of acquired distinctiveness. Section 2(f) states “nothing…shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce. The Director [of the Trademark Office] may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant’s goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made.”
Because Tasty Burger has been using its mark and logo for at least five years, there is a good chance that the USPTO will approve its application for registration on the Principal Register. If it is able to secure registration on the Principal Register, it will have much stronger support in its claim of trademark infringement against Chipotle’s new venture. However, before Tasty Burgers’ application can register on the Principal Register, it will have to go through a thirty day publication period where third parties
have an opportunity to oppose the registration. Consequently, Chipotle could file an opposition proceeding during this period challenging the claim of acquired distinctiveness.
Understanding what gives rights to trademark rights and the scope of protection available to different marks is important when strategizing your brand. If you have questions about the trademark process, please contact the trademark attorneys at Trademark Access. Let our experience protect your valuable brand.