Chipotle Mexican Grill, the fast casual behemoth, filed suit on April 4 in California federal court against Sweetgreen, alleging trademark infringement; trademark dilution; false designation of origin; and unfair competition.
Sweetgreen, another player in the fast casual landscape, is known for its salads and warm grain bowls. The Los Angeles-based company recently opened four Minnesota locations in Edina, St. Paul and two Minneapolis locations in the North Loop and on the University of Minnesota’s east bank campus.
Chipotle’s complaint arose from Sweetgreen’s recent unveiling of a new chipotle chicken burrito bowl product on March 30. Sweetgreen announced the new menu item in a press release and message to investors, where it described the chicken bowl as “the latest iteration of Sweetgreen’s menu innovation strategy, as the brand evolves beyond salads to introduce a bowl without any greens.”
Chipotle was keen to point out, without alleging infringement, the similarity between Sweetgreen’s new menu item and Chipotle’s popular chicken burrito bowl: “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,” the complaint said.
The litigation appears to be short lived as Sweetgreen said on April 6 — coincidentally, on National Burrito Day — that it would rename the menu item and settle the lawsuit.
Chipotle’s Allegations
Chipotle alleged trademark infringement in the marketing of the burrito bowl and display of the menu item’s title in a font that they say copied the CHIPOTLE® trademark. Additionally, Sweetgreen has marketed the product on numerous social media channels, on its website and in restaurants using a color scheme that Chipotle’s complaint called “nearly identical to Chipotle’s trademarked red color, Adobo Red, and Chipotle’s stylized mark CHIPOTLE®.”
The lawsuit stated that immediate action was necessitated after Sweetgreen — despite a cease and desist letter and at least one phone conversation with Chipotle’s legal counsel — continued marketing the menu product in the same font and style that Chipotle alleged as trademark infringement.
Chipotle settled a similar trademark infringement case in 2013 against Jack in the Box. In that case, Chipotle alleged that Jack in the Box had used its “CHIPOTLE” trademark to sell chicken entrees in its restaurants. Moreover, Chipotle alleged — as it did with Sweetgreen — that Jack in the Box’s use of the word “chipotle” in a font and color similar to Chipotle’s trademark constituted infringement.
At the time, Jack in the Box denied infringement on Chipotle’s trademark, saying that the term “chipotle” is a generic term referring to food prepared with chipotle peppers.
Bill McGeveran, a professor at the University of Minnesota Law school who specializes in intellectual property, seemed to echo that sentiment on April 5 in a Twitter post regarding Chipotle’s current action against Sweetgreen.
“There’s allegations about font and color, could raise different issues. But it also seems Chipotle (@ChipotleTweets) is trying to assert control over the word ‘chipotle’ for food flavored with chipotle peppers which… no. Just no,” McGeveran said in the Tweet.
Could Sweetgreen’s social media activity be a sticking point?
Chipotle further asserted that social media activity from Sweetgreen and its followers confirmed the trademark infringement. In an Instagram post by Sweetgreen announcing the chipotle chicken burrito bowl on March 30, a user replied “Chipotle who?!” to which Sweetgreen replied “you said it, not us” and included an emoji depicting “zipped lips.”
“Sweetgreen’s social media presence confirms its intent to affirmatively create a false association with the famous CHIPOTLE® restaurants and trade off the famous CHIPOTLE® Marks,” Chipotle’s complaint said.
Another Instagram user mentioned the official Chipotle Instagram account in a comment on the post. Chipotle says that this clearly indicates that the user understood the association that Sweetgreen is attempting to draw between its products and Chipotle’s famous brands.
One of the two elements of a valid trademark is whether or not the mark is distinctive. The ability of ordinary people to associate a mark with your brand in light of similar marks can bode well in proving that the mark is distinctive.
Prior to Sweetgreen’s agreement to settle the case, Chipotle had asked the court for an order to block Sweetgreen from using “CHIPOTLE” in the marketing and promoting of its services as a restaurant. Chipotle had also requested an unspecified amount of monetary damages, including all profits that Sweetgreen garnered as a result of the alleged infringement.
Do you think Chipotle would have been successful in proving trademark infringement by Sweetgreen? What kind of impact do you think this will have on IP in the fast casual food realm? The attorneys at Patterson Thuente will be sure to follow this case and any resulting impacts it has on trademark law — and intellectual property law more generally.