Recently, the popular Mexican grill chain Chipotle announced that they would be launching a new chain of burger joints called Tasty Made.
The new burger chain is part of an effort to revitalize Chipotle’s image after a series of outbreaks of E. coli earlier this year.
However, the new Tasty Made brand name ruffled the feathers of Tasty Burger, a Boston-based burger chain, which is now alleging that Chipotle is infringing on its trademark.
Tasty Burger’s lawyers sent Chipotle a cease-and-desist letter in July, but the burrito behemoth plans to move forward with the Tasty Made name anyway.
Whether a trademark infringes on an existing trademark depends on if there is a likelihood of confusion between the two marks. In determining whether there is a likelihood of confusion, courts use the DuPont factors, which were first used in the 1973 case In re E.I. du Pont de NeMours & Co.
The factors are:
- The strength of the mark
- The similarity of the marks
- The similarity of the goods
- The degree of care exercised by the consumer
- The defendant’s intent
- Actual confusion
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1. Strength of the Mark
A trademark is “weak” if the mark is merely descriptive and has not acquired sufficient secondary meaning. A mark is “strong” when it has acquired secondary meaning, or if it is arbitrary, fanciful or suggestive. The Tasty Burger trademark is descriptive after all, “Tasty” is a word that can describe a burger. Thus, the United States Patent and Trademark Office (USPTO) refused to register the Tasty Burger mark. According to a statement issued by Chipotle’s Communications Director, this is the primary reason Chipotle believes it can continue to use its Tasty Made mark.
However, the Tasty Burger mark is on the Supplemental Register for trademarks for trademarks that are not “inherently distinctive.” After a period of time of the Supplemental Register, companies can file their trademark to the Principal Register on a showing of acquired distinctiveness. Tasty Burger has filed its application to be promoted to the principal register, arguing that it has acquired distinctiveness by becoming well known in the northeast. Tasty Burger is the official burger of the Boston Red Sox and it has recently expanded its operations outside of Massachusetts.
2. Similarity of the Marks
As a general rule, marks must be compared in their entirety, including appearance, sound, connotation and commercial impression. Here, the two trademarks share the word “tasty,” but, according to Tasty Burger, it’s not just the names that are similar. The two restaurants also share similar color schemes and, while their logos use different fonts, the overall shape of the logos are analogous as well.
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3. Similarity of the Goods
The standard for infringement is whether an ordinary prudent purchaser would be likely to purchase one item, believing he was purchasing the other. Generally, a trademark owner is permitted to use a similar mark as long as it is on completely dissimilar goods (think Dove Soap and Dove Chocolate).
The protection afforded to a trademark owner may extend to related goods. For example, a trademark for use on canned tuna may extend to other canned fish, or use of a mark for kerosene lamps may extend to electric lamps. In such cases, courts consider whether consumers would reasonably expect that the goods came from the same source. The more extensively used and more popular the mark, the more likely it is that consumers will expect an expansion of the product base.
Courts also consider the similarity of the advertising and distribution channels. Many courts weigh this factor separately to determine if consumers will be exposed to potential confusion. Obviously, if both restaurants are “fast casual” burger chains, then the similarity of the goods is very high and they are also likely to have the similar, if not identical, distribution channels.
4. Degree of Care Exercised by the Consumer
The degree of care exercised by the consumer varies according to the purchase. Typically, a buyer making a more expensive purchase is more likely to be discriminating and is thus less likely to be confused by similar marks. Under these circumstances, courts require a more substantial showing of similarity to justify a claim of likelihood of confusion. On the other hand, inexpensive items that one buys on an impulse are more likely to be confused for other inexpensive items with a similar mark.
In this instance, fast food burgers, even those that are slightly more upscale than McDonald’s of Burger King, are relatively inexpensive. Thus Tasty Burger will likely argue that there is not a significant degree of care exercised by a consumer choosing which fast food chain to visit.
5. Defendant’s Intent
Although the defendant’s intent is not essential to proving infringement, it is a relevant factor. It is appropriate to consider the defendant’s intent because a party intending to cause confusion is generally successful in doing so. Direct evidence of the defendant’s intention to deceive is usually unavailable and the plaintiff must rely on circumstantial evidence. Such evidence could include how the defendant’s mark was chosen, whether the defendant was aware of the plaintiff’s mark, and whether the defendant continued to use the mark after the plaintiff’s warning.
Here, not only does Chipotle plan to continue using the mark despite Tasty Burger’s cease-and-desist letter, Chipotle was certainly aware of Tasty Burger’s mark. While Tasty Burger is a relatively small company compared to Chipotle, it is still well known in the northeast.
Additionally, their restaurants are located in the same neighborhoods, and in one instance share a landlord. However, Chipotle’s lawyers will likely argue that this circumstantial evidence is probably insufficient to show that Chipotle intended to confuse consumers nationwide when Tasty Burger is only well known in New England.
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6. Actual Confusion
Proof of actual confusion is also not essential in determining trademark infringement. However, such evidence is highly compelling. Sometimes companies will conduct surveys to determine actual confusion. These surveys are expensive, and if improperly conducted, may undermine the plaintiff’s case.
Chipotle has not yet launched its Tasty Made chain of restaurants, so it remains to be seen if there is any actual confusion between the two marks. What do you think? Is there a likelihood of confusion between the Tasty Burger and Tasty Made trademarks?
Consider these factors when developing a trademark for your business, or if you think another company might be infringing on your mark. In either case, you should consult a trademark attorney, and they can help you determine the best course of action for you and your trademarks.