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!