The news that Chipotle would be introducing a new burger concept — Tasty Made — caught a lot of people off guard. Analysts warned that the move was risky, especially in the wake of the chain’s food safety debacle of 2015. Restaurant consultants argued that the burger market is a difficult one, particularly because a slew of chains (particularly an upstart known as Shake Shack) have already cornered the upmarket burger category. But perhaps no one was as surprised at the news as David DuBois, the CEO of Tasty Burger.
Boston-based Tasty Burger currently operates six locations on the East Coast; the company recently expanded into Washington, DC. Its name, of course, bears a striking resemblance to Chipotle’s forthcoming concept, but its logo looks pretty similar, too, right down to the red and white color scheme:
On Monday morning, Tasty Burger CEO DuBois released a lengthy statement on the matter, saying his company (which opened its first restaurant in 2010) sent Chipotle a cease and desist letter on July 19, just a couple of weeks after Eater first reported on the forthcoming concept.
"Unfortunately, Chipotle has nonetheless issued press releases and engaged in a media campaign to promote their new ‘Tasty Made’ burger restaurants since receiving this letter," says DuBois. "Not to mention, they have continued to proliferate business fillings pertaining to this name."
"...it would be reasonable to assume that Chipotle has seen our signage."
According to DuBois, the logo and trademark recently procured by Chipotle are "unmistakably similar to our own in color, shape and design." The news has been confusing, he adds, because many Tasty Burger locations are located within close proximity to Chipotle stores. One is even owned by the same landlord as a Chipotle. In other words, "it would be reasonable to assume that [Chipotle has] seen our signage."
"When filing for the ‘Tasty Made’ registration, Chipotle’s legal team would have inevitably known of us at Tasty Burger, since they would have had to do a search of existing marks/registrations and come across ours," says DuBois, in the release. "All of this leads us to believe that Chipotle has intentionally chosen to proceed with the ‘Tasty Made’ name and mark without regard to the obvious infringement."
Likening a legal fight between Tasty Burger and Chipotle to a "David and Goliath scenario," DuBois alludes to a forthcoming lawsuit nonetheless, saying his company "cannot simply stand by and watch an enormously powerful company like Chipotle move forward with opening a burger restaurant with a similar name, mark, and logo design."
"Given Chipotle’s refusal to cease interfering with our established trademark rights, we have no choice but to aggressively protect our well established mark," says DuBois.
Interesting, Chipotle abandoned its initial name for a burger concept — Better Burger — because the company was challenged regarding its use of the trademark.
Chipotle believes both brands can co-exist.
Despite the allegations made by Tasty Burger, Chipotle still plans to use the name Tasty Made. "We fully intend to move forward with the name Tasty Made for our burger restaurant and strongly believe that we are on solid footing in doing so," says spokesperson Chris Arnold. "The United States Patent and Trademark Office refused to register a trademark for Tasty Burger because it is merely descriptive and not enforceable. Beyond that, we believe there is sufficient difference between the names and logo marks so as not to cause consumer confusion, and we believe both brands can co-exist."
According to a document obtained via the U.S. Patent and Trademark Office, Tasty Burger did file a trademark application for the name "Tasty Burger" in 2010. The color red is not noted as a feature of the logo, however, and the trademark consists only "of the words ‘Tasty Burger’ inside a stylized banner."
• All Chipotle Coverage [E]