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? The majority of blogs discussing the case would lead you to think so but, while that makes a good headline, the facts aren’t so clear. The label that Kroger is using on its chicken can be seen here, and its not certain from the image that the word “chipotle” is being used in a descriptive manner. The word is situated on its own line, in large lettering and a different font over the words “spicy fried chicken.” This smacks of branding to me and is similar to McCormick’s “Grill Mates'” trademark in the image above in as much as it is presented in a banner over the words identifying the particular product. Further, among Chipotle Mexican Grill’s registered trademarks is the word “Chipotle” (used alone) in class 029 for “prepared entrees consisting primarily of chicken, steak, carnitas, barbacoa or vegetables…” which seems pretty close to what Kroger is offering.   So, Chipotle Mexican Grill may have a point, particularly if its products are going to start showing up in your grocer’s freezer next to the California Pizza Kitchen’s pizza and the TGI Friday’s wings. But the real take-away here is not a burrito or chicken sandwich, but to be careful when selecting your marks and give some thought as to how others may or may not be using the words with respect to their products. The marketing department at the Salty Nut Company may love descriptive marks because they immediately tell consumers what product they sell, but legal is going to have a real hard time trying to stop anyone else from selling salty cashews or almonds.


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