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logosA Boston-based burger restaurant, Tasty Burger, has become embroiled in a trademark dispute with Chipotle, which plans to open up a series of burger joints under the name Tasty Made. Chipotle has yet to launch any Tasty Made stores, but plans to debut the brand in Ohio this fall.

Tasty Burger has sent a cease and desist letter to Chipotle. Despite this, Chipotle plans to move forward with its launch plans, and believes it is on solid legal footing in doing so. We asked Kevin O’Brien, associate professor of business ethics and legal studies, to respond to the controversy:

“Chipotle’s response that the Tasty Burger mark is descriptive and not enforceable is correct. A descriptive mark can be enforceable if it gains a secondary meaning. I believe it has gained a secondary meaning except possibly in a small area in the northeast. This does not meet the test of case law that uses the following factors to determine whether the trademark has acquired a secondary meaning when the consuming public primarily associates that mark with a particular producer, rather than the underlying product. A good example is Holiday Inn, which has acquired a secondary meaning because the consuming public views the term with a particular owner of hotel services, and not hotel services in general.

Courts look at the following factors to determine whether a mark has acquired secondary meaning:

  1. the volume of sales
  2. amount and manner of advertising
  3. the length and manner of the term’s use
  4. results of consumer surveys

With six stores, Tasty Burger would have difficulty making this argument of secondary meaning from a national level perspective. In addition, it is doubtful that Tasty Burger has the financial resources for a protracted fight in court with Chipotle.”