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!

There’s a “science” behind business names that most entrepreneurs, brand experts, and business coaches ignore! And that’s trademark law.

Seriously! Let me ask you this:

When you’re starting a new business or brainstorming a new product, course, or event, what’s one of the first questions you ask yourself?

Right! “What should I name it?”

At least if you’ve paid attention to the topic of this post, that’s what your answer should be…

And therein lies exactly what I mean! Because what most do not realize is that…

(1) Whatever you decide to name your next cash cow IS subject to the guidelines, rules, and “formulas” of trademark law!

After all, that’s what a trademark is – a distinctive mark like a name or a logo that identifies the source of a particular good or service.

And (2) all these business names aka trademarks exist on a LITERAL spectrum! Sort of like having a strong password vs a weak password. Because it’s not enough to just create a name that is cute and catchy and “marketable”. Your name needs to have strong “trademarkability”.

So if you want to have the best business name possible, it’s important that all entrepreneurs consult with the rules of trademark law, including learning this spectrum. This post will cover just that.

And after reading this post, you may also want to check out some of the strategies that we use in our Brand Name Consultation that builds off this spectrum and helps our clients develop some amazing trademark-worthy business names! (Future post to be linked later!)

For now, let’s get into the spectrum of marks!

The Spectrum of Marks

To build a strong business name, one of the first things you should learn is the spectrum of marks.

If you prefer to watch a fun, animated video explanation of the spectrum, check out our video below! Otherwise, continue reading…

Fanciful Marks 💎💎💎💎💎

Fanciful marks are made-up words or symbols that have nothing to do with the products or services being offered.

They include such name brands as:

Eg. Exxon, Polaroid, Rolex, Google, Reebok, Kodak, Xerox, and Dubsado

All of these brands are world-famous! And what’s even cooler is that they transcend language barriers. No matter where you are in the world, or what language you speak, Google is still Google. Polaroid is still Polaroid. There is no translation.

That’s why fanciful marks are the BEST marks that a brand can have! It’s like adding a new word to the world!

Fanciful marks are common with inventions/products, but they can apply to any business model so it’s definitely worth a try to create one!

Arbitrary Marks 💎💎💎💎

Not too far behind fanciful marks are arbitrary marks. 

Arbitrary marks refer to words with significance that are recognized in everyday language, but instead of signifying that particular thing, it signifies something entirely unrelated to the product or service to which the mark is attached.

That can sound like a mouthful, but an example will easily illustrate what I mean.

Eg. Apple for computers and tech devices; Blackberry for mobile phones

We all know about apples since diapers and learning our ABC’s. Prior to the late Steve Jobs, apples had nothing to do with technology. But now, since Jobs wisely decided that Apple would be the name of his now billion-dollar tech company, “apple” takes on a whole new meaning in our society.

And therein lies the power of an arbitrary brand name – the power to give a common word a whole new cultural meaning. The power to make (or require that) a person use context clues to decipher whether another is referring to the actual fruit or a computer.

Arbitrary marks ask that we use and think of words in a different and unexpected way, and can therefore lend itself as a powerful marketing tool.

And P.S. the same could be said about the marketability of fanciful marks – your imagination can really run wild when the word itself is already imaginary. In terms of marketing and branding your business, the world is your oyster with a fanciful mark.

Suggestive Marks 💎💎💎

Next up, we have suggestive marks.

Suggestive marks refer to words that SUGGESTS a feature or characteristic of the goods or services, but requires a bit of thought and imagination to determine what the goods or services are.

Eg. Microsoft: micro –> microchips and soft –> software

Greyhound: greyhounds –> fast animals —> fast transportation 

As you can see, suggestive marks are not obvious at first. As a consumer of both companies, I never even considered how Microsoft or Greyhound got their name until learning about trademarks in law school. There’s this inherent subtlety in these names and other suggestive marks.

That’s why we say that suggestive marks suggests a feature about the products/services, but unlike descriptive or generic marks, which we’ll cover next, do not explicitly state what the product/services are. With suggestive marks, consumers have to actively apply some “thinking power” to find the connection between the brand name and the product/service being offered.

Suggestive marks are fairly common business names among product-based and service-based businesses alike. And it is the last strength that business owners should aim for when naming their business, products, events, processes, etc.

Descriptive Marks 💎💎

And this brings us to one of the last notches of our spectrum, descriptive marks.

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

Eg. American Airlines

The service is DIRECTLY DESCRIBED within the name. It’s an airline company based in America. That’s it.

These 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. Our 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.

So, although we all know the billion-dollar company, American Airlines, today, it’s easy to see how broad and over expansive this name actually is. After all, American Airlines isn’t the only airlines with American roots. It’s possible that other airliners may have needed to use “American airlines” in their own marketing, advertising, and business affairs.

Yet, American Airlines has a registered trademark! So, though it’s not impossible to trademark such a descriptive name, you should expect an uphill battle to do so.

In the spirit of fairness, the USPTO allows companies like, American Airlines, California Pizza Kitchen, Kentucky Fried Chicken, or any other business, to successfully trademark their descriptive mark AS LONG AS they are able to show that their mark has acquired “secondary meaning”.

And here, secondary meaning = high degree of fame and notoriety

You need millions in revenue. You need hundreds of thousands, if not, millions of followers. You need large advertising receipts and large investments. You need unsolicited articles and posts about your company. You need surveys and studies that show that consumers recognize your mark (1) as a company name and not just industry terminology, and (2) as YOUR company name alone. Bottom line is, you need to be FAMOUS.

Compared to having a fanciful, arbitrary, or suggestive mark, you have to SHOW and DO a lot more than the bare minimum to successfully trademark a descriptive business name.

Generic Marks 💎

And lastly, we have generic marks. The WEAKEST marks!

Generic marks refer to words that are too closely related to the good or service such that it ACTUALLY NAMES the good or service. They are incapable of being trademarked on their own.

Eg: You can’t trademark “shoes” in clothing & footwear industry; can’t trademark “apple” in food industry

And the same reasoning we mentioned while discussing descriptive marks applies here. Monopolies are a no-no; fairness is the goal.

So, Jobs can trademark “Apple” because an apple has nothing to do with electronics, nor would his competitors ever need to refer to apples when marketing or selling their own tech products. However, a fruit farmer selling apples can’t trademark “Apple” as her company name on its own. She would need to add some other distinct word(s) for the USPTO to grant a trademark registration. And that’s when the farmer SHOULD revert back to the spectrum of marks to create something fanciful or add an arbitrary or suggestive word that is not already in use in her industry.

Without adding MORE to this fictional company name, her trademark application will almost surely be rejected.

Conclusion

So now we’ve covered the entire spectrum of marks! If you ever need a quick summary of the spectrum, save or pin our Instagram carousel for easy referencing! Or save this TikTok.

If you’ve created a brand name that meets this spectrum, then it’s time to legally protect it! Schedule your trademark discovery call now to have us assess your trademarkability and get started on your trademark journey!

If you need help creating a brand name that meets this standard, you’ve come to the right place! Book your Brand Name Consultation and create your 1 Hour Trademark! You can learn more about the consultation here.

And stay tuned! We’ll be giving you a quick look into some of the strategies that we implement during our Brand Name Consultation to help our clients create a brand name that is not only STRONG and aligned with this spectrum, but also exclusively available for trademark registration!