Descriptive trademarks are a pain in the…

Arby's Chipotle Chicken SandwichMcCormick Grill Mates Chipotle Marinade…neck to police. Just ask Chipotle Mexican Grill which is receiving some mild ridicule from numerous trademark blogs for its recent suit against Kroger supermarkets. Chipotle Mexican Grill accuses Kroger of trying to profit from and trade off of the goodwill that the restaurant chain has developed in its brand by selling ready-to-eat chicken entrees in its supermarkets with a label that reads “Chipotle Spicy Fried Chicken.” As any burrito fan and virtually everyone else knows, a chipotle is a smoke-dried jalapeño pepper commonly used to flavor Mexican and Tex-Mex food and, consequently, the word is commonly used to describe dishes so flavored. Therein lies the problem with policing descriptive marks. Even if a mark is registered and well known, a trademark owner cannot stop others from using ordinary words to describe their own products. This “descriptive fair use” defense is codified in our trademark laws (at 15 U.S.C. § 1115(b)(4)) and applies, according to the U.S. Supreme Court, without regard to whether or not some consumers may be confused. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004). As a result, the Arby’s restaurant chain can sell a chipotle chicken sandwich and the McCormick spice company can sell a chipotle chicken marinade without infringing any trademark rights. Anyone who has been to the supermarket recently knows that there are scores of chipotle flavored products available.

 So Chipotle Mexican Grill was foolish for picking on Kroger, right? (more…)