Showing posts with label restaurant. Show all posts
Showing posts with label restaurant. Show all posts

Tuesday, September 10, 2013

Despite Legal Threat, Rights to MUMBO Sauce Trademark Stay in Chicago

Argia B. Collins' Chicago Area Restaurant

"Mumbo sauce" is sometimes used as the colloquial name for a tangy sauce served in Washington, D.C. restaurants and local eateries. However, a legal challenge to the validity of the name as a unique trademark appears to have been resolved in favor of the Windy City as the owner's locale.

The Washington Post describes the D.C. sauce's flavor as somewhere between barbecue and sweet-and-sour sauce.  The sauce is also sometimes called "Mambo sauce."  It is a versatile condiment that can be used for anything from fried rice to ribs or wings.

The Chicago Tribune reported in 2007 that Argia B. Collins, who died in 2005, and who had been one of Chicago's premier African American restauranteurs, first coined the term in the 1950's.  Collins' heirs ultimately transferred the rights to the name to Select Brands, LLC.

According to the Select Brands' website:  "A perfectionist when it came to his restaurants, Argia B. was not satisfied with the bland, watered-downed sauces served in other establishments or the tart, over-powering national brands sold by restaurant supply houses....Drawing on his southern roots, he wanted to create a sauce with the savory flavors reminiscent of the homemade Sunday dinners that he had enjoyed on his family's farm."

An image displayed on the Select Brands' website documents Collins' use of "Mumbo Bar-B-Q Sauce" in 3 flavors.

Capital City's Mumbo Sauce
In the 1990's, Select Brands LLC filed for a federal trademark on "MUMBO" for barbecue sauce in International Class 36, and it was granted.

Subsequently, a petition to cancel this trademark on the basis that it had become the "generic" name for a type of sauce was filed by Capital City, LLC, the makers of Capital City Mumbo Sauce, a D.C.-based company.

The petition cited printed materials taken from several different websites that showed a variety of sauces described as unauthorized "Mumbo sauces."

The Trademark Trial and Appeal Board was not persuaded, however, finding that while this evidence showed "some generic use of the term 'Mumbo' in connection with sauces," that evidence consisted of printouts from only a few websites, and was not an overwhelming evidence of widespread generic usage.

Further, the Board seemed persuaded that Collins' heirs had undertaken serious efforts to police what they deemed as improper use of the trademark, and did not find the level of widespread and unrestricted usage necessary to deem a registered mark totally unworthy of protection.  The Board refused to cancel Select Brands' trademark.

The federally registered Mumbo trademark will therefore remain owned by Select Brands LLC.

However, in the event that Select sues Capital or the other unauthorized Mumbo sauce users for trademark infringement, the jury and judge would get the final say in the matter, as genericness as well as lack of likely confusion can be used as complete defenses in an infringement case in court.

Monday, August 26, 2013

Texas Roadhouse Sues to Protect Its Restaurants' Country Western Style

Can the style of a country western restaurant function as a valid trademark?

Texas Roadhouse believes that it can -- and does, and has sued to block other rustic-themed restaurants with similar country western motifs and names located in Indiana, Illinois and Michigan.

Texas Roadhouse is an American chain restaurant headquartered in Louisville, Kentucky, that specializes in steaks and barbecue fare, and promotes a rustic country western theme.  The chain operates over 300 locations in nearly every state.  The restaurants are known for their rough and ready look, with steel buckets of peanuts on every table.

The company is now demanding that a federal court order competing restaurant chains Texas Corral and Amarillo Roadhouse to cease their uses of confusingly similar names and themes, claiming that consumer confusion is likely.
According to the lawsuit filed in the Western District of Michigan, Texas Corral operates a Western-themed, casual, family restaurant that is "markedly similar in appearance to the Texas Roadhouse concept."
In an interview with the press, the senior director of public relations for Texas Roadhouse claimed that instances of actual confusion have occurred, with "even delivery drivers going to the wrong location on occasion."

Texas Roadhouse is claiming exclusive ownership of "the overall appearance" of its restaurants, including wooden booths and tables with light brown stain and green bench seat cushions, dish shaped, green metal light fixtures hung over individual tables, galvanized metal pails filled with free peanuts on the tables, and upbeat country music playing over speakers.

Texas Roadhouse's argument is not unprecedented.  Indeed, the U.S. Supreme Court has unequivocally held that federal trademark law can protect the theme of a restaurant.

Taco Cabana operated a chain of fast food restaurants in Texas which served Mexican food. Taco Cabana described its Mexican-themed trade dress as "a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals. The patio includes interior and exterior areas with the interior patio capable of being sealed off from the outside patio by overhead garage doors. The stepped exterior of the building is a festive and vivid color scheme using top border paint and neon stripes. Bright awnings and umbrellas continue the theme."

Subsequently, a Two Pesos restaurant opened in Houston.  Two Pesos adopted a motif very similar to Taco Cabana's trade dress.  Two Pesos' restaurants expanded rapidly in Houston and other markets, but did not enter San Antonio.  In 1986, Taco Cabana entered the Houston and Austin markets and expanded into other Texas cities, including Dallas and El Paso where Two Pesos was also doing business.

A Texas jury found that Taco Cabana owned a distinctive concept as a form of "trade dress," that taken as a whole, was non-functional, and that there was a significant likelihood of consumer confusion between the two restaurants based on Two Pesos' intentional copying of the distinctive Mexican motif.

Texas Roadhouse is no stranger to litigation over its "style."

In recent years, it faced EEOC charges that hiring managers at the company allegedly told jobseekers ages 40 and older that “we need the young, hot ones who are ‘chipper’ and stuff” and that they were “basically looking for young teenagers.” 

The company has also been sued for underpaying its waitstaff, allegations which it reportedly settled by paying millions.

Thursday, August 22, 2013

Umami Burger Chain Loses Bid to Block Pizzeria's Use of "Umami"

According to its Wikipedia entry, "UMAMI /uːˈmɑːmi/, a savory taste, is one of the five basic tastes, (together with sweetsourbitter and salty)."  Its linguistic origins are Japanese:  "A loanword from the Japanese (うま味), umami can be translated "pleasant savory taste".

A non-profit organization, the Umami Information Center (UIC) was established in 1982 in order to convey accurate information about umami as a basic taste. According to the UIC, the umami flavor is attracting the attention of chefs around the world, in part due to the boom in Japanese food.

However, the word has not left those American chefs trying to brand it into a trademark with a very pleasant taste in their mouths.

The gourmet hamburger chain had filed a trademark infringement case against Umami Mia Pizzeria, LLC in federal court in Austin, Texas. The Umami Burger chain boasts numerous locations in high-end areas in southern and northern California, as well as in Miami, Florida and Greenwich Village, New York.

According to its website, Umami Burger's founder Adam Fleischman developed the high-end burger restaurant concept dedicated to the all-American classic food after developing a palate for fine wines and managing some of Los Angeles' finest wine bars. He opened his first Umami Burger on La Brea [California] in 2009.

Its menu boasts burgers covered in "house-made truffle cheese," "port-caramelized onions," and even "Welsh Rabbit burgers." The New York City establishment boasts a 3 hour wait.

The Texas upstart, Umami Mia Pizzeria is located solely in Austin, and offers a more pizza-centric menudevoid of any type of hamburgers.

After holding a hearing, Federal District Court Judge Sam Sparks was apparently unconvinced that UMAMI could function as a trademark in this instance, and rejected the argument that consumers would likely be confused into associating the restaurants.

It is worth noting that Fleischman's recent difficulties in successfully monopolizing "UMAMI" as a trademark are not novel, and the word has endured a tortured history under U.S. trademark law.

For example, in 1995, Tucker Food Products, Inc., a Missouri company, had sought to trademark the word UMAMI in connection with sauces and marinades, volunteering that the "English translation of 'UMAMI' is 'deliciousness', 'taste', 'flavor' and/or 'relish'."  The mark was approved for publication, but Tucker never filed any statement of use, so the mark was later deemed abandoned.

Subsequently, the trademark "UMAMI" became successfully registered in 2009 by Mastronardi Produce, a Canadian company, in connection with tomatoes.

Initially, the Trademark Office deemed the word UMAMI "merely descriptive" as used in connection with tomatoes and refused Mastronardi's application on the basis that the term UMAMI merely described its taste.  According to the U.S. Trademark Office, UMAMI "is sometimes considered to be a fifth basic taste along with sweet, sour, salty, and bitter."  Further, ripe tomatoes are apparently rich in components that lead to UMAMI.

However, Mastronardi's trademark lawyers were able to convince the Trademark Office that "UMAMI TOMATO" currently has no particular linguistic significance in the trade or industry, and as such, is not descriptive of anything in particular about tomatoes. By further offering to disclaim any rights to the word "TOMATO," the Trademark Office permitted the mark UMAMI to become a registered trademark for tomatoes.

Subsequently, Fleischman was also able to register multiple federal trademarks on "UMAMI CAFE," and "UMAMI BURGER." He is apparently now attempting to register "UMAMI CHIPS," and "UMAMI ENERGY" (for energy drinks).

But Fleischman has company.  Many other companies and individuals have been similarly attempting to register "UMAMI BEER", "UMAMI SUSHI", "UMAMI OYSTER", and "UMAMI TSUNAMI" (for condiments).

The recent battle in Austin over use of the word is clearly not the end of the conflict. Even though Judge Sparks denied Fleischman's bid to stop Umami Mia Pizzeria, that is only a preliminary decision.  A full trial on the merits is expected in 2014.

Friday, July 6, 2012

Is "CHIPOTLE" a Valid Trademark?

Chipotle chilis - meco variety
The word "chipotle" comes from the Nahuatl word chilpoctli meaning "smoked chili pepper," and is a smoke-dried jalapeño pepper.  It is a flavorful chili pepper used primarily in Mexican and Mexican-inspired cuisines, such as Mexican-American and Tex-Mex.  The word has widely been used generically to describe this type of flavor.

Enter Chipotle Mexican Grill, Inc., a chain of restaurants located in the United States, UK and Canada, specializing in delicious burritos and tacos, and known for its fresh, natural ingredients and “assembly-line” production method. 

Despite its enormous success and popularity (as long lines of customers can attest), the company continues to face an uphill battle in legally capturing the word “CHIPOTLE” as a trademark. When the restaurant chain applied for the word trademark in 2003, the US Trademark Examiner initially refused to register it, finding that it was "highly descriptive of the goods and/or services."  

However, the Examiner went on to invite the company to offer specific evidence of distinctiveness, including dollar sales under the mark, advertising figures, samples of advertising, consumer or dealer statements of recognition of the mark, and any other evidence that establishes the distinctiveness of the mark as an indicator of source.  The Examiner reminded the company that "the [Trademark] Office will decide each case on its own merits."

Subsequently in June 2008, the CHIPOTLE trademark application became a registration on the Supplemental Trademark Register.  The Supplemental Register is a purgatory for descriptive or otherwise problematic marks which may (or may not) mature to the Principal Register.A quick search on Google demonstrates that CHIPOTLE has clearly become associated with the Plaintiff's restaurants.  

But can the CHIPOTLE word ever qualify to become a legally protectable trademark in its own right?  It may depend on whether CHIPOTLE is deemed "generic" or "descriptive" by a court.  The distinction is subtle, but meaningful.  A generic mark can NEVER become a trademark.  Examples of generic words are CHICKEN, RESTAURANT and GRILL. However, a mark that is descriptive CAN become a trademark, if sufficient "distinctiveness is acquired" by a single company.  Here, generic/descriptive use by unauthorized third parties create a chicken-and-egg problem for the restaurant chain, which is stuck with creating "distinctiveness in the making."  

Can such a brand owner who is still trying to establish trademark rights meaningfully assert a viable legal claim?  For example, Subway sandwich shops offer a product called CHIPOTLE CHICKEN. This usage does not appear to be licensed, and has apparently not drawn a lawsuit (yet). However, when the Kroger Company launched a product called CHIPOTLE CHICKEN in supermarkets, it was summarily sued and chose to settle.  Such outcomes can help a Plaintiff demonstrate good faith efforts to police the marketplace, but they do not in and of themselves resolve the ultimate linguistic -- and legal -- matter.  If larger and more visible third parties (such as Subway) continue to use the word in a generic or descriptive (i.e., non-trademark) manner, CHIPOTLE may be confined to those marks that never escape their perpetual sentence in trademark purgatory.  Only time will tell.