On May 9th, we learned that the United States Patent and Trademark Office (USPTO) has VERY quietly released a proposal to increase their fees.

The price is going up!

We shared this news with our newsletter first. So you should sign up here!

This price change is estimated to go into effect in November 2024, but it wasn’t too long ago that the USPTO increased some of their fees in 2021, after COVID left them severely backed-up.

Now, not only are they planning to increase the cost of items/services AGAIN, but they also plan to charge for items that have never incurred an additional fee before! Increased fees exist for almost everything ranging from $50 to $200+. Under this new proposal, a trademark application for 1 mark/class, currently $250, will start at $350 with additional fees for simple customizations.

Bottom line: They are literally brainstorming “creative” ways to make you spend MORE money.

They say that this price change is all in an effort to improve processing times, recover Office costs, and enhance the quality of incoming applications. And they conveniently failed to mention that this may also be an attempt to combat the HOARDS of fraudulent Chinese applications left uncheck for YEARS that are slowing down the Office.

But still, we hate to see that this is their proposed solution.

It seems that once again, they’ve determined that the easy fix to their backlog is to raise the bar to entry. Decrease public access to trademark registration by increasing the financial commitment of new trademark applicants.

And though increased costs would very likely discourage unserious entrepreneurs from filing trademarks, unfortunately, many SERIOUS business owners will be penalized, as well. Especially small business owners with big dreams and real hustle. They’re going to be the ones to feel the financial strain AND the pressure to self-file and risk making a careless mistake.

Over 60% of trademark applications filed are initially rejected.

These odds decrease with an attorney. These DIYers, hoping to save money, in fact stand to lose funds AND time spent if they (1) don’t have an attorney-provided search report, and (2) make errors too serious for an attorney to later come in and correct.

More improperly drafted applications and uninformed applicants won’t “improve the quality of incoming applications” nor processing time. The USPTO will just collect their money, and the DIYers will be without a trademark certificate.

So if you’ve been procrastinating on protecting your brand, this is a sign to get serious about it. Decide whether your brand name, logo, slogan, and/or other brand assets are worth protecting!

You don’t want to deal with these upcoming fees nor the eventual influx of applications before the fee increase.

And if you think your brand is worthy of protection, let’s get started on your trademark journey immediately! 

Put some (R)espect on your name!

POP QUIZ: Take our Brand Name Quiz

Find out whether your brand, product, course, or event name is ready for trademark registration! Take our quiz below.

In today’s business landscape, trademarks are an essential aspect of any brand’s identity. They provide consumers with a quick and easy way to identify a product or service, and they help businesses establish and protect their unique identities in the marketplace. However, before applying for a trademark, it is crucial to conduct a trademark search report.

Burger King’s and Katy Perry’s recent loss is evidence of just that. In today’s blog post, we’ll be discussing the importance of conducting a trademark search report and why it is essential for any business looking to establish a unique brand identity. We’ll be using Burger King and Katy Perry as our examples.

What Do Burger King and Katy Perry have in common?

Katy Perry as a hamubrger at the Met Gala 2019

As a result, Katie filed suit against the megastar for trademark infringement. And as of a couple days ago, Katie was awarded financial damages against Katy Perry in an amount to be determined next month.

Now, I honestly can’t say that I’m surprised that Katy Perry ran into a conflicting trademark. She is using a name that is so common. And I imagine there’s so many people with the exact spelling or some other variation of both “Katy” and “Perry”, who dream of being business owners. When a name is that common, you have to be first to register it!

And so, in addition to this being a reminder to build a distinctive brand name, this tale also demonstrates the importance of conducting a trademark search report.

What is a Trademark Search Report?

Before applying for a trademark, it is crucial to conduct a comprehensive trademark search report.

A trademark search report is a comprehensive search conducted to determine whether a proposed trademark is available for use and registration. It helps identify any existing trademarks or competitors that may conflict with your proposed trademark.

This report typically includes a search of both registered and unregistered trademarks in the relevant jurisdiction(s) and can provide information on similar or identical marks, pending applications, and expired trademarks. These reports also include information on common law trademarks, which are unregistered marks that have been used in commerce, but have not been registered with the relevant trademark office.

The trademark search report is an important step in the trademark registration process as it (1) helps to ensure that the proposed trademark is distinctive and unique enough to be registered, and (2) helps prevent potential legal issues if the proposed mark infringes on any existing trademarks.

These reports are provided by trademark attorneys with expertise in trademark law and trademark searching. With the help of powerful algorithms, we are able to look for conflicting marks or businesses with phonetic variations, separation of words, translations, plurals, reversed words, misspellings, synonyms, and a lot more across U.S. Federal trademark registrations, state trademark registrations, business entity formations, domain name registrations, worldwide web results, social media, and more.

Benefits of a Trademark Search Report

Now that you understand what a trademark search report is, let’s discuss the benefits of this report for your business’ plans:

1. Saves Time & Money

One of the major benefits of conducting a trademark search report is saved time and money. Conducting a tradmeark search report can prevent you from investing time and resources into a trademark that cannot be registered or protected.

This means that your trademark search report report should ideally be completed prior to investing any money into a mark, whether it’s your brand name, logo, slogan, or some other source-identifier! It makes little sense to invest money into a mark before learning whether it will be available for your exclusive use.

Trust us. The last thing you’ll want to hear is that you’ve invested time and money into a trademark that cannot be used, and you will need to start from scratch. These are always difficult conversations to have, especially if you have already started to develop an attachment to your mark.

So after you’ve brainstormed a brand name, your immediate next step should be to conduct a trademark search report, not hire a web designer or graphic designer! Unfortunately, many business owners tend to do this out of order because they are unaware of the trademark process. So, if you’re a business owner reading this or know of any entrepreneurs, please pass this info along to your entrepreneurial friend.

2. Avoids Legal Issues

As mentioned previously, conducting a trademark search report also helps to prevent legal issues down the line.

A trademark search report can help identify any potential conflicts or infringement with existing trademarks. Having this report can prevent a business from unknowingly infringing on another company’s trademark and potentially facing legal action or even having to rebrand entirely.

In 1971, resources were limited. Burger King may not have reasonably been able to locate the local Australian restaurant operating under the same name.

However, the reports of the 2000s absolutely can identify these users! Sometimes, even a simple Google search can reveal so much. So Katy Perry’s team may not be able to share the same excuse.

It’s unclear whether Katy Perry discovered her competitor through a search report. However, what IS clear is that (1) Katy selected a non-distinctive name, as many celebrities who operate a brand under their personal names do; and (2) though she and her team were aware of the conflicting user, they proceeded to willfully infringe on Katie’s trademark rights withour regard to their previously failed attempts.

Katy’s team should have just found a more creative way to provide merchandise that excluded use of “KATY PERRY”. I’m sure this might be difficult, but these creative geniuses can figure something out! And it would have been cool for her to market this merchandise as something made exclusive to the fans of that continent. Now, unfortunately, they’ll have to pay up and rebrand if they wish to sell merchandise in Australia again.

This is why it’s best to rebrand at the onset before you’ve invested any more money into a trademark rather than rebrand after making large expenses and an expensive lawsuit.

3. Identifies Weaknesses

Last but not least, a trademark search report is important because it can help a business identify any potential weaknesses in their proposed trademark.

It is absolutely crucial that any proposed trademark submitted for registration is distinctive and unique enough to stand out in the marketplace. Conducting a trademark search report can help a business owner identify any similar trademarks or potential issues that could weaken their proposed trademark’s strength, as well as, provide insight into a business’ future expenses.

For example, if the report shows that there are many competitors with a “confusingly similar” trademark to yours, you can expect to spend more money on marketing and SEO efforts to stand out among them. This is valuable information you should know prior to investing too much into your trademark and brand.

All the more reason to conduct your report PRIOR to hiring a professional to build your mark and/or marketing under your mark.

Conclusion

Photos from my time spent in Sydney, AU

Fall 2013 & Feb-Nov 2015

Thanks to The TTABlog’s latest blog post, I recently learned of the Trademark Trial and Appeal Board’s (TTAB’s) decision to uphold the United States Patent and Trademark Office’s (USPTO’s) refusal to register VETEMENTS as a trademark for various clothing items, including shirts, skirts, and sweaters, and for related retail store services. You’ve probaly heard of this major French fashion brand before!

In re Vetements Group AG, the TTAB upheld that Vetement’s mark(s) were “generic” and “merely descriptive” of their goods and services, and lacking in the “acquired distinctiveness” that would be needed to overcome these issues. We previously defined these terms for you. For the sake of time, you can check out our Glossary and/or read the following posts for more explanation on what they mean.

But for today’s blog post, I thought it would be a good idea to go over the main reason why VETEMENTS was denied registration and what you should take away from this case if you have developed a foreign language trademark. In this blog post, we’ll explain the “doctrine of foreign equivalents” and what it means for your brand.

What Is the Doctrine of Foreign Equivalents?

If you are a visual learner, you may enjoy watching the following video. It covers some of the main points that we’ll be discussed in this post.

The doctrine of foreign equivalents is a legal principle applied in U.S. trademark law that requires courts, the USPTO, and the TTAB to translate foreign words into English to determine whether they are registrable as trademarks, or confusingly similar to existing trademarks.

This doctrine is intended to protect consumers within the United States from confusion or deception caused by the use of same term in different languages. As a general principle, the doctrine is applied in situations in which an American consumer is likely to “stop and translate” foreign words into their English equivalent. And in fact, most modern-day languages are subject to the doctrine of foreign equivalents.

So, (1) if your business name when translated to English is still “generic” or is “merely descriptive” of the goods or services being offered, OR (2) if your name shares the same meaning as an already existing trademark in ANY language, then your mark will very likely NOT eligible for trademark registration.

In the latter scenario, the two marks would be considered too similar to coexist in the marketplace.

And today’s post discusses an example of the former. “Vetements” is a French language term that translates into English as “clothing”, making the mark generic, i.e. descriptive of the product itself. This is a big problem under trademark law.

Why Is the Doctrine of Foreign Equivalents Important?

The doctrine of foreign equivalents is important because it helps to prevent confusion in the marketplace and ensures that each business is given fair opportunity to promote their business.

The doctrine recognizes that consumers may be familiar with foreign languages and as such, may associate foreign terms with their English equivalents. By treating foreign terms as equivalent to their English counterparts, trademark law aims to protect consumers from confusion or deception.

Furthermore, the doctrine of equivalents ensures that unfair competition isn’t being created. As you can imagine, other businesses within the clothing and retail industry need to be able to use the word “clothing” when describing their own products. It would be unfair to allow one company to have a monolopy of a word that everyone would need to reasonably use in their business’ operations and marketing, regardless of it being stated in a different language. 

This means that in practice, when assessing the availability of a trademark, it is important to consider not only the exact words used, but also any foreign equivalents that may be considered too similar. For companies that operate globally or that have multilingual branding strategies, this can be a crucial factor to consider when developing and protecting trademarks.

Conclusion

To wrap things up, the doctrine of foreign equivalents is an important principle in trademark law and understanding this doctrine is critical to developing a comprehensive trademark strategy. 

It is important that you are aware of the implications of this doctrine for your trademark strategy and that you work with an experienced trademark attorney who can help you navigate the complexities of trademark law.

If you have not yet consulted with a trademark attorney regarding your foreign language trademark or any trademark for that matter, you may be missing out on vital analytics and opening yourself up to potential legal challenges, like consumer confusion and litigation.

Need Help?

If you’ve created a generic foreign trademark or your trademark already exists in another language for the exact or similar products and/or services, you may want to pick up our eBook, 10 Mistakes to Avoid for a Smart & Successful Brand Name.

In this eBook, one of the topics we cover is foreign language trademarks, including the exception to the rule, further explanation of the legal implications, as well as, how you should manually conduct a proper search for other potential brand name conflicts. Take advantage of our 50% off limited time offer!

Otherwise, it may be time for a rebrand.

We know that this news is often difficult to hear, but you’re definitely in for a harder road ahead if you continue down this path. You’ll waste more time and money, fighting for a mark that might not truly be worth it. Rebranding, though sometimes costly, will save you in the long run and help you secure the legacy you truly intended.

And if you need help selecting an entirely new business name, we have a service that can help! Check out our Brand Name Consultation, a 60 Minute Legal-Marketing hybrid session designed to create a name that is not only trademarkable, but also marketable within 1 hour. It’s our 1 Hour Trademark.

Conducted via video call, we guide entrepreneurs through the “legal science” of trademark law, introduce strategies that stimulate creative expression, and create a name that NOT ONLY avoids the most common trademark pitfalls, BUT ALSO captivates the attention of your target consumer! We can help you cut down on the brain fog and time that it takes to brainstorm with our proven methodology. Visit this page for more.

Book your solution below!

Right now there’s a lot of buzz and debate surrounding all of the new AI (artificial intelligence) tools and technology like ChatGPT, Jasper, and more of the like. While many are excited at the possibilities of this new technology, others have expressed concern over the potential risks to their career. Just the other day, I came across a tweet stating that lawyers, accountants, and consultants should be worried about their jobs.

Despite my objection to this tweet, personally, I’m a fan of AI!

For simple administrative tasks, like drafting an email, blog/newsletter topics, content ideas, even writing a blog post, ChatGPT has been the little personal assistant a solopreneur like myself needs. And I’m sure other solopreneurs and teams can relate! That quick rough draft saves so much mental energy! Revise, add, reform into your own voice and you’re good to go.

And it’s even provided me with ideas on how I can improve different areas of my practice. Sort of like what you would find in Google search, but just compiled into easy digestible bites. I love that I can ask my questions conversationally and allow this tool to refine/expand on an idea or redirect/substitute an idea for another.

For tasks like these, ChatGPT is perfect. A life savior for the hustling entrepreneur!

However, as impressive as ChatGPT and other AI are, at the end of the day, they’re just tools.

It should go without saying that ChatGPT can not replace the sophisticated thought process, analysis, and human element of a trained attorney. To even think that would be to erroneously believe that the only thing an attorney does is file paperwork, draft legal documents, and spit out facts to legal cases.

And of course, this complexity applies to any professional in a consulting position! But today’s blog post will share some of the reasons why ChatGPT cannot replace the help of an attorney:

Why ChatGPT can’t replace the help of an attorney

1. Lack of Factual Accuracy & Limited Knowledge

Currently, at the bottom of the ChatGPT screen reads the following disclaimer:

“ChatGPT Mar 23 Version. Free Research Preview. ChatGPT may produce inaccurate information about people, places, or facts.”

And the home screen also states ChatGPT limitations, that is, (1) it “may occasionally generate incorrect information”; (2) “may occasionally produce harmful instructions or biased content”; and (3) has “limited knowledge of world and events after 2021”.

And therein lies the major criticism among attorneys. Many attorneys have realized that while playing with this tool, that it has produced inaccurate information, including erroneous facts of cases, erroneous conclusions of cases, and even completely fabricating cases that do not exist. In their FAQs, ChatGPT admits that it will occasionally make up facts or ‘hallucinate’ outputs”. And as it states, it has limited knowledge after 2021 so it is not up to date on recent legal developments and cases either.

Attorneys are required by license to keep up with changes in our field and the profession as a whole, as well as, attend classes called CLEs (Continuing Legal Education) that supplement this education. Learning for us doesn’t end after school is over.

So, relying on ChatGPT for legal facts and advice is just ill-advised.

It would take a legally-trained mind to spot what’s right vs. what’s wrong. Because even when put to the test, ChatGPT has doubled down on the inaccuracies and misinformation rather than correct itself using educated users’ input.

2. Lack of Legal Expertise & Life Experience

While ChatGPT is an intelligent machine, it is by no means a legal expert. It can provide some answers to general legal questions, much like Google can, but it cannot give you legal advice.

Contrary to what many may think, the job of an attorney isn’t just to memorize cases and statutes. We have to apply them creatively and methodologically. And that doesn’t come without years of training and actual practice, i.e. experience.

ChatGPT doesn’t have that. It lacks the ability to analyze complex legal issues, interpret legal documents and regulations, and apply them to specific cases. It doesn’t have the life experience that attorneys, and humans, do. It can mimic our behavior, compile data, but it just can’t think for itself and make decisions.

Moreover, just like any other serious profession, attorneys are wired to think differently from the general public.

There’s been so many times where I can personally recognize the difference between how I would approach a situation prior to being an attorney versus my approach now. It’s interesting and almost shocking, and I’m sure sometimes annoying to the general public (lol). For example, when I get a contract — even the lengthy terms and conditions from Apple — I start itching to read it. It almost hurts to blindly sign without reading them. It goes against everything I and my fellow attorneys was taught in law school.

ChatGPT is unable to apply past experiences and connect with texts in this manner. Sure, it can read the terms and conditions, but is it truly able to understand all of the consequences and real world applications of it? Likely not.

3. No Personalized Guidance

As you can imagine, every legal case is unique, and thus requires an examination of very specific factors in order to provide adequate legal counsel.

ChatGPT provides at most generic responses based on the input it receives. And because clients do not always understand what would be legally relevant or irrelevant to their case, this input can already come at a disadvantaged.

Attorneys work closely with their clients to understand their specific situation, provide tailored legal advice, and represent them in court if necessary.

Attorneys provide a human touch and can empathize with their clients, which ChatGPT cannot do.

Many of the public are already apprehensive of a robot driving their car and self-driving cars, I would imagine they would be even more worried leaving their life and fate in the hands of AI in a high-stakes criminal court proceeding.

Clients want to connect with their attorney. They want to look them in their eye and know that they’re fighting for them as if it was their own person or a loved one’s life on the line. AI is totally incapable of providing that necessary empathy and conveying that confidence to a client.

4. Limited Scope

While ChatGPT can provide answers to general legal questions, it has a limited scope. As mentioned previously, it cannot provide assistance with specific legal issues nor can it represent clients in court.

And that’s likely not change anytime soon! The legal system is VERY slow to change, almost resistant. As society continues to advance, the judicial system is still struggling o catch up.

Turn on the news and you’re bound to hear some strange takes on social media apps, like Facebook and Tiktok, from policy makers and officials. It’s no secret that many of these officials have no clue about these new tools and youth culture. So it’s definitely going to take some time before we see an AI even granted a license to practice to law.

Attorneys, on the other hand, can provide legal representation in a wide range of legal matters, including intellectual property, criminal defense, personal injury, family law, immigration, and many more. As most attorneys do take the traditional route to become a part of this profession, we must undergo 4 years of college, 3 years of law school, a state-specific bar (“the baby bar”), the elusive, bar exam, and a character & fitness test before we are provided with a license to practice. And to keep that license we must continue to seek legal education in the form of CLEs and report that we have done so.

5. Confidentiality and Privacy

Legal matters can be extremely sensitive, and clients need to feel comfortable sharing their personal information and legal issues. As ChatGPT is a machine, clients may rightfully not feel comfortable sharing their confidential information with it.

Attorneys, on the other hand, are bound by strict confidentiality rules and can provide a safe and secure environment for their clients. Attorney-client privilege is one of the hallmarks of our profession. While your friend may not honor and protect your secrets, your attorney must.

Futhermore, the privacy rules of ChatGPT are still developing. As this is a new tool, ChatGPT is collecting and storing inputted data to learn more about us and the world. The creators want to learn how we interact with the tool, any errors they may need to correct, and so much more. This data will be meticulously reviewed. That’s why ChatGPT warns users to not enter any confidential and private information that you wouldn’t want them or a stranger to know.

However, earlier this month, it was reported tht Samsung employees have unfortunately inputed sensitive information on at least 3 separate occasions, including, confidential, proprietary code into ChatGPT for corrections. Now the company is worried about their information is readily available to strangers on the other end. Read more in this article.

Similarly, clients should be concerned about inputting private, sensitive information or even “accidentlally” confessing to anything via ChatGPT. Just as your Internet search history can be subpoenaed, it may be the case that your ChatGPT history can be used against you in the future. Currently, the only way to remove this private information is to delete your account, which may take up to 4 weeks. And though ChatGPT is trained to decline inappropriate requests, I’m sure users may find ways to circumvent this machine and get the information they need. So maybe they can get around ChatGPT’s “training”, but they may not be able to circumvent the law. It’s best to avoid ChatGPT if privacy is a concern.

Predictions & Conclusion

In conclusion, while ChatGPT is truly a fascinating technology that can provide some insight and answers to general legal questions, it can by no means replace the expertise, guidance, and personalized attention of an attorney.

Legal matters are complex and require human interaction, understanding, and empathy. That’s why it is not only essential to seek the help of a qualified attorney for legal advice and representation, but also, I disagree that my career or any other consultant-like career is in jeopardy with the introduction of this technology. People want to trust and consult with people, not robots.

On the other hand, I do believe that AI is going to change the world! I can definitely imagine certain careers being transformed in the near future — especially those jobs that focus heavily on journalism. I imagine that companies will still hire writers, but their jobs may be restructured to work side by side with AI. And depending on how you view it, this could be a good or a bad thing. Maybe a writer will want a rough draft to help them get started, or maybe it’ll take away from the creative process of their job and other jobs. Only time will tell.

Need Help?

Looking for help from an experienced attorney? Whether about business formation, trademark and/or copyright registration, contract drafting and review, or other legal strategy, you’ve come to the right place.

Contact our Firm for help on your business journey! Talk to a human, not an AI.

MORAL: “Don’t adopt words that are descriptive of your business as trademarks! You may not like how close competitors can get”.

This post has been updated. Please see update below.

As a LOYAL and devoted customer of Sweetgreen, I frequently receive emails about all of their new offerings. 

In an email from April 5th, Sweetgreen promoted 2 new menu items. Their new “Roasted Chipotle Salsa” was the main focus, but immediately following that salsa promotion, was a smaller, almost footer-like ad of their new “Chipotle Chicken Burrito Bowl”.

Being the foodie and Sweetgreen addict that I am, I thought, “Hmm, I want to try that bowl”.

Nothing more. No red flags in my trademark-trained mind.

Never did I think that the very next day, April 6th, I would learn that Chipotle had filed a lawsuit against Sweetgreen earlier this week over alleged infringement of their CHIPOTLE® trademark in Sweetgreen’s “Chipotle Chicken Burrito Bowl” title. 

Some of my fellow trademark attorneys sent me a thread from Twitter user, @TessaVMolnar, regarding Chipotle v. Sweetgreen, and I couldn’t help but laugh and strongly agree with her analysis!

To put it bluntly, this case seems like a REACH. Chipotle’s legal team had to do some deep stretching and possibly pulled some muscles when drafting this complaint. And unfortunately for them, to anyone with a legal mind, it shows. Chipotle’s complaint was a laughingstock in the trademark community.

About Chipotle’s Complaint

In their complaint, Chipotle writes “…Sweetgreen is using Chipotle’s famous CHIPOTLE® trademark to sell a product that is very similar and directly competitive to Chipotle’s chicken burrito bowl. Sweetgreen’s conduct constitutes trademark infringement, trademark dilution, and [sic] false designation of origin, and deceptive trade practice”.

Now based on the above statement, the general public may think,

“Okay, I can see where they’re heading. ‘Chipotle’ is their brand name. Sweetgreen is using their brand name without their permission. Sweetgreen is in the wrong”.

However, this analysis is missing some very important trademark perspective!

Twitter user and professor at American University Washington College of Law, @Prof_Farley, tweeted the main takeaway of today’s post. What all entrepreneurs should take away from Chipotle v. Sweetgreen.

“Don’t adopt words that are descriptive of your business as trademarks! You may not like how close competitors can get”.

“Merely Descriptive” – Chipotle

We’ve discussed this before in this blog post and in this TikTok, but a “merely descriptive business name” is one of the worst business names that you can create. We’ll pop in a little excerpt to explain why.

Descriptive marks refer to words that DIRECTLY DESCRIBE a characteristic, ingredient, quality, feature, or purpose of the goods or services.

Descriptive marks require zero imagination or explanation. They’re no fuss and straight to the point, making them an unfortunate popular choice among entrepreneurs and especially, brick-and-mortar stores.

From a marketing perspective, these descriptive marks may seem like a great idea for search engine optimization (SEO) and “searchability”.

However, from a trademark perspective, a descriptive mark is one of the most troubling business names you can have. That is, because descriptive marks are notoriously rejected for trademark registration by the USPTO (United States Patent and Trademark Office) in an effort to avoid unfair competition.

One of trademark law’s main objectives is to remove unfair competition. Society is hesitant to allow one company to obtain exclusive ownership over a word/phrase/mark that other competitors would naturally AND reasonably need to use within their own business’ operations and advertising. And so, the USPTO is tasked with ensuring that companies do not receive an unfair advantage by monopolizing terminology and phrases that should be available for all.

Chipotle’s brand name aka trademark describes a popular ingredient found not only within their food items, but in Mexican cuisine in general — chipotle seasoning.

Luckily, Chipotle was able to obtain a registration for their trademark, CHIPOTLE. And I assume that registration didn’t come easy! However, unfortunately, that registration doesn’t come without problems because Chipotle has trademarked a word that other food/restaurant companies would reasonably need to use when describing their own products. So their trademark registration is already on somewhat shaky ground.

It makes sense for Sweetgreen and other competitors to want to describe the products of their food menu with the main ingredients in the item titles.

Sweetgreen does this quite frequently with their “Spinach Florentine Bowl”, “Hummus Crunch Salad”, “Hot Honey Chicken Plate”, etc. 

Food product names and menu titles commonly include the actual ingredients. Take a look at our IG post below. All of these companies have very similar brand names because they’ve all chosen to focus on the main ingredient of their product.

The genral public wants to know what they’re eating after all!

So it would be one thing — and a better argument — if Chipotle actually had a unique name and wasn’t named after a popular seasoning in Mexican cuisine. But because they are, their trademark isn’t as strong and protectable as it can be!

And that’s what makes the allegations in Chipotle’s complaint that much more ridiculous.

Chipotle’s Allegations against Sweetgreen

Please see Tessa’s thread for a FULL BREAKDOWN of Chipotle’s claims, but to focus on a few…

CLAIM 1: One of Chipotle’s claims of trademark infringement lies in Sweetgreen’s usage of capitalization in its menu items. Chipotle alleges that Sweetgreen’s “capitalization of the first letter of the word ‘Chipotle’ and on occasion displaying ‘CHIPOTLE’ in all capital letters” is evidence of copy-cat behavior. See the ad below.

It’s just strange. Should Sweetgreen not be able to capitalize letters in their menu as they’ve always done? Capitalization is a necessity for English language.

Though Chipotle’s team isn’t solely relying on capitalization as evidence of Sweetgreen’s infringing conduct, the rest of their evidence isn’t any better. The complaint is filled with weak, and honestly, just plain weird arguments like this one.

CLAIM 2: Another claim Chipotle has made is that Sweetgreen is using a bigger font for “Chipotle Chicken Burrito Bowl” and a similar color to Chipotle’s Adobe Red in their outdoor ads, hence creating an association. If an ad is about a specific product, why wouldn’t the product title be big & bold in your face? This is not normal evidence of trademark infringement. On the other hand, to be fair, the Adobe Red comparison could be a valid point, but as Tessa pointed out, many food companies use this red-ish color when advertising chipotle-related items because it’s the actual color of chipotle seasoning.

CLAIM 3: And what’s probably the most egregious claim, Chipotle alleges that Sweetgreen’s infringing conduct includes that Sweetgreen’s “Chipotle Chicken Burrito Bowl” “features very similar ingredients to Chipotle’s burrito bowls, including chicken, a grain base (such as rice), black beans, and salsa”.

Um….yes, Chipotle team. That is the point. It’s a burrito bowl made of chipotle-seasoned chicken. A burrito bowl has to have the essentials of an average burrito placed in a bowl…

But instead, the Chipotle team would prefer for Sweetgreen to use “Chicken Bowl with Chipotle” as an alternative title.

What?????? It’s hilarious! Given this evidence, I completely understand Sweetgreen’s lack of response to Chipotle’s first demand letter.

Moreover, I’m sure that Sweetgreen isn’t the first company to create a competing chipotle chicken burrito bowl either. As Tessa pointed out Old El Paso’s “Chipotle Chicken Burrito Bowl” exists.

When I visited my local Pathmark today, I was even able to spot the “infringing” product right away! Has Chipotle ever contacted Old El Paso? 

If they haven’t, I reason that it could be that Chipotle’s legal team finds issue with Sweetgreen’s particularly due to the fact that they are “unaffiliated companies who compete in the ‘fast casual’ restaurant industry”. Old El Paso in comparison is a food producer. Customers go to Chipotle and Sweetgreen to create their orders, whereas Old El Paso customers find their products in grocery stores to make at home. If there hasn’t been an issue between Chipotle and Old El Paso before, this can explain the lack of pushback.

Chipotle v Sweetgreen Outcome & Predictions

Nevertheless, at the time of writing this article, the only action Sweetgreen has taken to resolve this issue with Chipotle is to hyphenate the title “Chipotle-Chicken Burrito Bowl”. Whether that will be enough to satisfy Chipotle is unknown.

And from my review of Trademark Twitter, it appears everyone agrees that this complaint is … questionable. Though we all suspect that this outcome will ultimately be resolved in Sweetgreen’s favor if litigated, we’re all still very curious to see what Sweetgreen will say in response AND what litigation could potentially mean for Chipotle’s trademark.

After all, it’s a merely descriptive mark, which is already pretty weak on the trademark scale, and subject to genericide — “the process by which a brand name loses its distinctive identity as a result of being used to refer to any product or service of its kind” (Google); aka the death of a trademark — like this astute Twitter user stated below.

This matter clearly shows that Chipotle is using a word that others withinn their industry reasonably need to use in their own business and marketing. They can’t have a monopoly on this seasoning!

So Chipotle bringing this lawsuit potentially puts them right back in the eyes of trademark authorities, like the TTAB (Trademark Trial and Appeal Board), who can cancel their trademark registration for being generic/too descriptive! For this reason, Chipotle obviously needs to be VERY careful when policing their trademark and choose their battles against competitors wisely.

Only time will tell if this was a battle worth engaging in at all.

Case: Case No. 8:23-CV-00596 District Court, Central District of California.

UPDATE: Later that evening, on April 6th, CNBC reported that Sweetgreen renamed their item to “Chicken + Chipotle Pepper Bowl”. Click to read CNBC article.

Author’s Note: Though I personally wish that Sweetgreen didn’t yield to Chipotle’s request, — I stand by my opinon that Chipotle’s claims were a BIG REACH — I do understand that Sweetgreen may not have found that the impending money and litigation worth it.

At the end of the day, Sweetgreen doesn’t really have a dog in this fight. Sweetgreen isn’t in the business of strictly making Mexican cuisine. They’re not using chipotle seasoning in every food item on their menu. And the fact that Sweetgreen even hyphenated the name suggests that they were open to listening to Chipotle’s concerns and litigation-avoidant. The Sweetgreen team may have found that litigation just wasn’t worth it.

But maybe Chipotle will meet a more equally matched competitor in the future! You never know!

For now, the matter is resolved and we’ll assume both parties are happy to move forward.

POP QUIZ: Put Your Brand Name To The Test!

Designed with the most common trademark mistakes in mind, see if your brand name has what it takes for trademark registration! Hopefully, your brand name isn’t merely descriptive like Chipotle!

One of the first things you learn while studying Trademark Law is that “there’s no such thing as trademark rights in a word”.

So when the public at large becomes upset that a celebrity, public figure, or person is trying to trademark a word, like Kim Kardashian’s “Kimono” or Michael B. Jordan’s “J’ouvert”, they mistakenly believe that Kim and Michael are trying to own a word outright! That no other company or person will be able to use those words whatsoever, whether in ordinary conversation…or in business! And though there is some truth to that last point — business owners and businesses who own a trademark ARE afforded some special rights — this sentiment is still WHOLLY inaccurate!

The rights granted through trademark registration are not as broad as people may think!

Now, if we briefly set aside the cultural significance and appropriation issue behind these two marks – and don’t worry! I’ll get back to it 👀 – both scenarios highlight something pretty important! Most people are completely uninformed about (1) what a trademark is, and (2) how trademarks REALLY work.

So it’s time we cleared up that confusion and talk about how trademarks REALLY work in our society!

HOW TRADEMARKS REALLY WORK

TRADEMARK = WORD/PHRASE/LOGO/MARK + GOODS/SERVICES

And because a trademark is dependent on your good/services, that’s why companies like Dove soap and Dove chocolate can both exist despite being owned by two separate companies! And other companies too, like:

• • Delta Airlines vs Delta Faucets
  • Domino Sugar vs Domino’s Pizza
  • Canon EOS (Canon cameras’ operating system) vs eos Lip Balm,
  • MAC Cosmetics vs and Apple’s Mac Computers
  • Morningstar (investment research company) vs Morningstar Farms (vegetarian food company)

Under Trademark Law, two brands can co-exist with the same name as long as the two brands do not create customer confusion. And whether there’s consumer confusion is dependent on multiple factors, but some factors that we do consider are:

(1) whether products/services are in different industries;

eg. Dove soap = skincare vs. Dove chocolate = food

(2) whether the products/services share similarities, including purpose and price point; and

eg. Mac Computers = $1000+ technology vs. MAC Cosmetics = $20-$80 make-up

(3) whether there are similarities in marketing and target consumers

eg. Hungry consumers don’t confuse a bar of soap for a bar of chocolate. Similarly, consumers shopping for electronics aren’t confusing a make-up palette for a laptop.

For one company to have a total monopoly of a word would mean that they have products and services that fit every industry in America! It’s impossible. No one company is a one size fits all, does all. Even billion dollar corporations with extensive trademark portfolios operate only in a few industries at a time.

Kim K. and Michael B. Jordan’s Trademark Applications

Michael’s trademark application was in its final stages and approved by the USPTO before the public caught wind of the application and expressed their disapproval.

snippet from Michael B. Jordan’s J’ouvert Trademark Application

J’ouvert Registration Certificate for audio & video recordings, digital media, and downloadable music that’s been registered since 2014.

DESCRIPTIVE BUSINESS NAMES

& FOREIGN LANGUAGE BUSINESS NAMES

As a side note: I do believe that Kim would have faced an uphill battle attempting to trademark “Kimono” because her name when translated to English describes exactly what she provides – “clothing”. Typically, when your business name describes the product/service you’re offering, the USPTO will ignore, “disclaim”, that portion of your name and look to the other parts of your business name to see if it’s distinct enough for trademark registration. To avoid further confusion/getting off-topic, we’ll just say that descriptive business names, even those of a foreign language, are NEVER good business names.

If your business name describes your product/services OR if your business name is a foreign language, you should take our quiz: Is Your Brand Name Trademark Ready? You’ll get more information on the legal implications behind your business name.

So…What We Can Learn from Kim K. and Michael B. Jordan’s Controversies

Again, the public misunderstands what it means to really trademark a word. It doesn’t provide as broad of ownership rights as they think! It only protects the word under the goods/services listed on the trademark application. So Kim K. and Michael B. Jordan’s actions aren’t AS extreme as the public believes it to be.

HOWEVER…

Should some words, though trademarkable, be off-limits anyway? Absolutely!

Just because you CAN successfully trademark a word doesn’t mean you should. And Kim K. and Michael B. Jordan both learned this lesson the hard way when the public boycotted their brands.

My personal opinion? J’ouvert is so intricately tied to the roots and culture of West Indians and Caribbean people. J’ouvert is a part of our carnival experience – a celebration typically held the night before the daytime carnival.

And then add the fact that so much of our music makes reference to drinking rum! Rum HAS to be the number 1 drink of choice in West Indian & Caribbean culture.

So for one company to monopolize on that significance is just culturally insensitive!

Growing up, my mom would joke every Crop Over (Barbados’ carnival season) that my favorite songs were always the ones about rum. And she’s right!

As a child, I would daydream about my adult self at J’ouvert and at Kadooment (Barbados’ daytime carnival) in a costume, drinking rum, and having the time of my life. We all live that experience! We all share some version of that dream! Hence the outrage!

The public has made an example of Kim Kardashian and Michael B. Jordan, but by no means, will they be the last people or company to make this mistake.

When you’re influenced by a culture, you need to fully consult with the people of that culture.

And it honestly might not be enough to just have someone of the culture on your team, like Michael B. Jordan’s supposed situation.

You may want to ask people outside of the work bubble and business-fantasy that you’re building! You need someone objective and neutral. It’s important! Fail to do so, and you’ll likely waste all the money you’ve invested into your brand – packaging, inventory, domains, promotional items, etc. – and find yourself facing an expensive rebrand.

If you need help rebranding, JNJ Legal offers an amazing Brand Name Consultation to help entrepreneurs name their brand, course, event, etc. in 1 hour! Review our Brand Name Consultation for more information, reviews, FAQs, and more.