August 8, 2016 at 2:48 PM
When the news about Chipotle's new burger chain, Tasty Made, got out last week, it left one burger company seeing double. Tasty Burger, a fast-casual chain from Boston that just opened a location in Washington, alleges that Chipotle's long-anticipated burger concept is infringing on its trademark.
When the news broke, "We started to get a deluge of emails and texts saying 'Chipotle took your name,'" said CEO David DuBois. His company's lawyers sent Chipotle a cease-and-desist letter on July 19, but the burrito giant plans to move forward with Tasty Made anyway.
"It's a little bit of bullying," said DuBois, who describes the corporation as Goliath to his six-location chain's David. "They've got the money and the clout to do it."
The names of the two burger concepts are awfully similar. And a company's likelihood to cause consumer confusion about the origin of goods or services is one of the legal tests that is applied in such cases. When the products being sold by two disputed trademarked companies are similar — e.g., two fast-casual burger joints — they are more likely to meet this test.
When a trademark holder sues another company for infringement, it needs to prove the likelihood of the trade name causing consumer confusion.
It's not just the names that sound similar, according to Tasty Burger. The two burger joints have similar color schemes — though Tasty Burger's trademark registration does not claim color as a feature of the mark — and while their logos have different fonts and pictures, the shapes are analogous. Chipotle, DuBois argues, would have been aware of his brand because their restaurants are in the same neighborhoods and, in one instance, share a landlord.
Chipotle doesn't plan to change Tasty Made's name. The company's communications director, Chris Arnold, issued a statement:
We fully intend to move forward with the name Tasty Made for our burger restaurant and strongly believe that we are on solid footing in doing so. The United States Patent and Trademark Office refused to register a trademark for Tasty Burger because it is merely descriptive and not enforceable. Beyond that, we believe there is sufficient difference between the names and logo marks so as not to cause consumer confusion, and we believe both brands can co-exist.
There's there's some legal nuance to parse in that second sentence. Tasty Burger's trademark is on the Supplemental Register, which is for trademarks that are "not inherently distinctive" according to the International Trademark Association. "Tasty" is a word that can describe a burger, after all. But after a period of time on the Supplemental Register, companies can file their trademark to the Principal Register "on a showing of acquired distinctiveness." Tasty Burger has acquired its distinctiveness by becoming well-known in the Northeast, says DuBois: It is the official burger of the Boston Red Sox, and recently expanded outside of Massachusetts. DuBois says the company has already filed its application to be promoted to the Principal Register.
Chipotle's burger concept was originally registered as "Better Burger," but Eater reported that the company abandoned that trademark in June. They filed for "Tasty Made" shortly before that — and last month announced that the first restaurant would open in Lancaster, Ohio, this fall. It will be the company's third spin-off. It also owns ShopHouse, an Asian rice bowl chain with multiple locations in the Washington area as well as in California and Illinois, and it has a partnership with Pizzeria Locale, a quick-serve pizza chain with locations in Colorado, Kansas, Missouri and Ohio.
Tasty Made is also a chance for Chipotle to bounce back from a bad year. Widespread outbreaks of E. coli, salmonella, and norovirus linked to the restaurant sickened more than 500 people nationwide last fall, not that its biggest fans cared. The company has taken several measures to win customers back — adding chorizo to its menu, starting a rewards program, and doling out free burritos. The Tasty Made concept gave Chipotle's stock a brief boost, but it has not yet recovered to its pre-E. coli price.
DuBois wouldn't specify Tasty Burger's next step, but said the company will "take any actions necessary moving forward to assure the protection of our mark."
Until then, he is worried that the similarities will damage his brand.
"Anybody who looks at it is going to say, 'Wow that's really similar,'" he said. "It's very difficult for them to argue at this point that those two brands couldn't be confused."