When a company has a trademark on a word, this doesn’t necessarily mean it has exclusive rights to the word. It means it has exclusive rights to the word in certain contexts in the marketplace.
This may seem like just a matter of semantics, but it has important ramifications for businesses. Enforcement of trademark rights requires deep knowledge of how far the rights can go.
A recent lawsuit involving two fast-casual restaurant chains can illustrate why this point is so important.
Chipotle Mexican Grill Inc. recently filed a lawsuit against the salad-oriented chain Sweetgreen Inc., alleging trademark infringement. At issue is a new item on Sweetgreen’s menu called the “Chipotle Chicken Burrito Bowl.”
The Chipotle restaurant company claims the name of the menu item infringes on its trademark rights, particularly because the item is similar to items on Chipotle’s menu.
According to Chipotle’s lawsuit, Sweetgreen’s advertisement style the word “chipotle” in a similar font to the one employed by the Chipotle chain and use a color similar to “adobe red,” a color which Chipotle has trademarked in some contexts.
The lawsuit asks for a ruling that would prevent Sweetgreen from using the name “chipotle” and for damages. Chipotle Mexican Grill also suggests that Sweetgreen could rename the menu item to something that minimizes the use of the word “chipotle,” such as “chicken burrito bowl with chipotle.”
When is a chili pepper not a chili pepper?
In its generic sense, a chipotle pepper is simply a dried and smoked jalapeno pepper, a common ingredient in Mexican cuisine. Chipotle Mexican Grill Inc. has trademarks that give it exclusive rights to use the word “chipotle” in certain contexts, but this does not mean the company is the only entity in the word that has the right to use the word.
Similarly, Chipotle has rights to the shade it calls “adobe red” only insofar as they might be used in its area of commerce. If Chipotle filed suit against a fine artist who used the same shade in a painting or a high-end fashion designer who used it in a ballroom gown, the restaurant company would likely lose its case.