This browser is not actively supported anymore. For the best passle experience, we strongly recommend you upgrade your browser.

| 1 minute read

When is a spice not a spice....

Most cooks know that chipotle is a smoke-dried jalapeno pepper that can add depth of flavor and heat to sauces and Mexican inspired dishes.  It is also part of the federally registered Trademark "Chipotle Mexican Grill".  

A recent lawsuit filed in California will likely turn on whether the word "chipotle" is being used in a manner that is merely descriptive, as opposed to a distinctive means of identifying the source of goods or services. This second use of a word is protected by federal and state trademark laws, while the first is not.

The lawsuit brought by Chipotle Mexican Grill seeks to prevent its competitor Sweetgreen from using the word "chipotle" in the name of its "Chipotle Chicken Burrito Bowl".  While at first glance it might seem apparent that this use of the word "chipotle" is descriptive of the spice used in the dish, there may be more to it than that.  If Sweetgreen is using the word in a manner that is likely to cause confusion by implying "affiliation, connection or association" Chipotle Mexican Grill, or confusion as to the origin, sponsorship, or approval of Sweetgreen's dish, Sweetgreen may indeed have liability.  

Cases like this can mean big expenses for a business.  Trademark owners have an obligation to "police their marks" - be alert to possible infringement and seek to enforce their rights against infringers - in order to keep the mark in force.  As a result, in the long run infringement is rarely overlooked.  When infringement is found, the owner of a mark can seek statutory damages, as well as disgorgement of profits from the infringer.  Defending the litigation can be time consuming for management, involve significant legal expense and bring negative publicity to the infringer.     

Chipotle’s lawsuit also claims that Sweetgreen advertisements for the menu item feature “Chipotle” in a font similar to the burrito chain’s stylized logo and sometimes use a shade of red similar to Chipotle’s trademarked Adobo Red. Sweetgreen’s website features the product name larger than any other identifying feature that ties it back to Sweetgreen, Chipotle argues in the complaint.