Back in August, East Coast burger chain Tasty Burger sent a cease-and-desist letter to Chipotle over its trademark for the company’s new burger venture, Tasty Made. Now that the latter has opened its first location — in Columbus, OH, as of yesterday — Tasty Burger says it’s making its opposition to that trademark formal.
Tasty Burger says in a statement that it’s filed a consolidated notice of opposition to all Tasty Made marks filed with the United States Patent and Trademark Office, in an effort to “aggressively protect the Tasty Burger mark and its goodwill from any mark that causes confusion” amongst its customers.
Claiming that the Tasty Made brand has “audaciously ignored Tasty Burger’s efforts to protect its marks and goodwill amongst consumers,” Tasty Burger says this kind of protection is necessary “against a competitor who willfully uses a confusingly similar name and marks, despite being made aware of the confusion.”
Tasty Burger says it seems that Chipotle has decided to just do as it pleases.
“Frankly, as a $12 billion Goliath, Chipotle knows full well an independent business like Tasty Burger only has two choices: stand the ground and weather the storm both financially and legally, or let them steamroll over us,” the chain says.
Chipotle doesn’t see it that way, with spokesman Chris Arnold pointing to the USPTO’s 2011 ruling on the Tasty Burger trademark, saying that the ruling “indicated that the name was purely descriptive and not sufficiently unique.”
That ruling reads, in part: “Registration is refused because the applied-for mark merely describes a feature and characteristic of applicant’s services. A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods and/or services. As indicated in the initial Office action, the wording TASTY BURGER describes good tasting hamburgers.”
There is no trademark conflict between our name and the Tasty Burger name,” Chipotle says. “The U.S. Trademark and Patent Office approved all Tasty Made trademark applications for registration on the primary register. Not only is there not a basis for any claim, even if there were, the USPTO already deemed the Tasty Burger name to be merely descriptive and thus not protectable. Tasty Burger is simply using this as a way to build awareness for their brand and has no valid legal basis to challenge our trademark.”
by Mary Beth Quirk via Consumerist