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Brand names: can reputation overcome lack of distinctiveness?

22-08-2016

The dispute between established burger chain Tasty Burger and newcomer Tasty Made highlights the perils of selecting descriptive terms when creating a brand name, says Novagraaf's Theo Visser.

Boston-based hamburger chain Tasty Burger is to bring a case of trademark infringement against burrito food chain Chipotle following its expansion into the burger market under the brand ‘Tasty Made’. Tasty Burger alleges that Chipotle has infringed both its brand name and the colours used in its logo with the launch; however, Tasty Burger’s case may be hampered by the lack of distinctiveness in its own trade name.

Does ‘Tasty Burger’ function as a trademark?
In order to obtain a trademark, a chosen brand, trade name, logo and/or slogan etc needs to fulfil a number of conditions of registration. In particular, this includes the requirement for the chosen name to be ‘distinctive’ (the more distinctive the name, the more likely it will be accepted) and for it not to be too descriptive (if a name is too descriptive of the goods or services, the trademark office will likely refuse the application). Arguably, the brand name ‘Tasty Burger’ falls short on both these criteria. However, in its favour, the chain has been trading since 2010 and has acquired brand name recognition in its local market.

Can the chain prove deliberate trademark infringement?
In addition to the arguments of brand infringement (both in terms of the name and colour of the logo), Tasty Burger has pointed to the location of the Chipotle burger chain as further proof of deliberate infringement (the branches of the Tasty Made have all been located in the vicinity of Tasty Burger restaurants). Tasty Burger adds that Chipotle must have been aware of its brand and logo when launching its burger brand, and has therefore deliberately opted to confuse potential customers.

Chipotle may have been emboldened, however, by the fact the US Patent and Trademark Office (USPTO) refused the registration of the word mark ‘Tasty Burger’ on the grounds that it was ‘merely descriptive’.

Bringing a case based on acquired reputation
It is possible to argue that a trade name has acquired the necessary distinctiveness in its market to function as a trademark; for example, through longstanding or intensive use. However, the barrier to doing so, is arguably very high. (The US does not share the UK’s law of passing off.)

From a marketing perspective, the choice of a descriptive name can sometimes be attractive when selecting a brand name for launch. From a legal perspective, however, a distinctive name (which also does not fail on grounds of descriptiveness) is far preferential; in particular, when it comes to arguing cases of infringement in the courts.

For more advice on trademarks and brand development, speak to your Novagraaf attorney or contact us.

Theo Visser is a consultant and partner in the Amsterdam offices of Novagraaf