“Spicy” Trademark Lawsuit of the Month

by Greenberg Glusker Fields Claman & Machtinger LLP
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Let’s play a game.  It’s called Guess-Who-the-Trademark-Owner-Is.  (I wanted to call it “Guess Who,” but didn’t want to risk confusing you with products/services of Hasbro or The Guess Who.)  Wait!  Don’t stop reading yet!  This will be fun.¹ Sort of.²

Here is the game.  Imagine you walk into a supermarket to get some food for a party.  Once inside the supermarket, you are uncontrollably lured to the deli counter by the siren call of fried chicken.  You look down at the chicken deciding what type to purchase for the party.  You settle on the “Chipotle Spicy Fried Chicken,” because you want to impress your friends by showing them that you can handle spicy food.  (Sadly, deep down, you know that chipotle isn’t really that spicy and that your friends know this too.  Who are you kidding anyway?)

Now, guess what company cooked up the delicious looking Chipotle Spicy Fried Chicken that you selected (right side of the picture below)?

After you guess, continue reading to find out whether you win a prize or not.

Did you guess that the “Chipotle Spicy Fried Chicken” was made by The Kroger Company?  Probably not, unless you cheated by using Google first.  And cheaters don’t deserve a prize.³

Did you guess that the “Chipotle Spicy Fried Chicken” was made by Chipotle Mexican Grill, Incorporated?  If so, you lost!  But as a consolation prize, the Chipotle company would love to have you as a trademark survey participant for use in their new trademark lawsuit against Kroger!  On a more personal note, you may want to ask yourself what led you to that ridiculous conclusion.  Since when does Chipotle — a Mexican restaurant — make fried chicken and sell it in the grocery store?  That just doesn’t add up.

Not according to Chipotle, though.  Chipotle has accused Kroger of previously marketing its “spicy” fried chicken under the “Chester’s” brand (shown above), but now marketing it as “Chipotle Spicy Fried Chicken.”  Among other things, Chipotle has a registered trademark to use the trademark “CHIPOTLE” in connection with:

“Class 29 – prepared entrees consisting primarily of chicken, steak, carnitas, barbacoa or vegetables; prepared vegetable-based entrees; salads comprised of lettuce and choice of meat, beans, salsa, cheese and/or sour cream; guacamole; sour cream; cooked beans; cheese.”

“Class 30 – burritos; tacos; fajita burritos; salsa; tortillas; tortilla chips; rice; salads comprised of rice and choice of meat, beans, salsa, cheese and/or sour cream; prepared entrees consisting primarily of rice”

I do see “entrees consisting primarily of chicken,” but I don’t see “fried chicken” anywhere on that list of Mexican food.  Nevertheless, I can understand Chipotle’s beef.  (Zing!)  From Chipotle’s perspective, it looks like Kroger took an existing brand name (i.e., Chester’s) and replaced it with the word “Chipotle.”  In other words, it appears as if the word “Chipotle” is not descriptive of the ingredients, but rather is being used as a brand identifier.  And that’s my biggest question.  Does Kroger’s Spicy Fried Chicken actually contain chipotle seasoning in it?  Or did Kroger simply decide to rebrand its spicy fried chicken with something sexier than Chester the chicken?

Knowing the answer to these questions would go a long way towards determining the intent of Kroger — which is one of the six factors the Colorado district court will be examining in this case as it analyzes the all-important “likelihood of confusion.”  The other five factors are (1) the degree of similarity between the marks (Chipotle wins because they are the same mark); (2) evidence of actual confusion (Chipotle wins if you answered the survey wrong); (3) the relation in use and the manner of marketing between the goods or services marketing by the competing party (hard to say without evidence); (4) the degree of care likely to be exercised by purchasers (probably not much, especially if they are hungry); and (5) the strength or weakness of the marks (Chipotle is probably a weak mark because it refers to a common ingredient and is used frequently by others as a descriptive term).

In my opinion, it will be interesting to see if any “spicy” evidence comes out during discovery, particularly with respect to Kroger’s intent and whether the chicken actually contains chipotle seasoning.  If there is chipotle seasoning in the product, Kroger can plausibly argue not only that it had no ill intent in adopting the new “Chipotle” label, but that the word “Chipotle” isn’t being used a brand identifier at all (but rather, simply a description of what gives its “spicy fried chicken” that spicy-ish-ness).

Then again, if the case proceeds for any duration, it could boil down to a simple game of chicken.

¹ Actual fun not guaranteed.

² Wild tangent:  Now, whenever I write “Sort of” after any sentence, I can’t help but think of Dmitri Martin’s joke about how “sort of,” while a generally harmless phrase, becomes incredibly important when you say it after certain things like, “I love you,” or “You’re going to live!”

³ On the off chance that you did guess, without cheating, that the fried chicken was made by The Kroger Company, check your mail.  A coupon for 20% off at Bed Bath & Beyond should be arriving shortly. (Legal disclaimer: not really.)

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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