Category Archives: Fun Facts

Building a Portfolio – the Chipotle Brand

Companies whose marks toe the descriptive-suggestive line can have complicated paths to “full” trademark protection on the US Principal Register. Let’s look at one what is now a well-known brand traveled the path to a strong registration portfolio – the house mark for Chipotle, the Denver-based fast Mexican chain. The company now has more than fifty active US filings, about half of which are registrations for its house mark or stylizations thereof. Andrew Roppel of Holland & Hart’s Boulder Office is the filing correspondent for the company’s US marks.

Chipotle’s first trademark registration was for CHIPOTLE MEXICAN GRILL & Design, shown below. The full prosecution history has never been scanned by the USPTO, but the application was filed in 1994 based on use since the prior year; a registration eventually issued on the Supplemental Register in late 1995. Why did it end up on the Supplemental Register? A chipotle pepper is a dried, smoked jalapeno pepper, either used on its own or packed in a spicy adobo sauce often used in Mexican cuisine, including in some of Chipotle Mexican Grill’s own food.

Chipotle_first
chipotle_dried

The company revisited its trademark portfolio in 1998, filing for the logo above, the word mark CHIPOTLE MEXICAN GRILL, and the word mark CHIPOTLE with 2(f) claims in 1998, eventually obtaining registrations for each in 2000. The company faced a 2(e) refusal for these re-filed applications. In response, it submitted extensive arguments arguing that CHIPOTLE was suggestive rather than descriptive, but the Office continued to refuse the mark as merely descriptive. A 2(f) claim based solely on 5 years’ use was sufficient to move forward to registration.

At the same time, the Office requested that the company disclaim CHIPOTLE and MEXICAN GRILL in the combined application. A response making a 2(f) claim and disclaimer of “Mexican Grill” overcame that issue, too.

The company’s expansion into prepared food products in 2005 generated similar issues, although, since the applicant was initially filed as an intent to use application, its 2(f) claim was initially refused on the grounds that (a) “chipotle” was more related to the applied-for foods than even restaurant services, and the distinctiveness for the prior registrations for services would not necessarily translate. The applicant was able to argue around the refusal based on the relationship between the goods and services, without having to fully paper out an evidence-based acquired distinctiveness claim. The application for CHIPOTLE alone for foods also ran into some prior-pending applications for BAJA CHIPOTLE for meat, CHIPOTLE BEEF PATTY for burgers, and CHIPOTLE for pizza, but each of them was abandoned prior to registration – the BAJA CHIPOTLE mark after an opposition by Chipotle Mexican Grill, the other two due to run of the mill prosecution inconveniences.

Chipotle has since obtained numerous registrations for variations of its house mark, all with little fuss – the 2(f) claims aren’t generating push-back from examiners any more, largely because most have probably eaten at a Chipotle restaurant at least once.

If you have a client facing a similar issue, TM TKO helps you research trademark prosecution histories, with more than ten million Office Actions and Responses that are fully searchable by issue, free-text, or any mark criteria that you can think of. Find the best examples of successful responses and evidence, mold the ideas and legal theories to your facts, and do your best work to help your clients succeed.

High Fantasy Tropes as Trademarks

It’s rare that someone hasn’t enjoyed some of the writings or fictional worlds of some of the great fantasy authors, like J. R. R. Tolkien, Ursula K. Le Guin, George R. R. Martin, J. K. Rowling, and many more, even including the rare writer who does not use their initials as a part of their name. Let’s look to see how some of the most common tropes from “high” fantasy fiction have turned into brand names.

As it turns out, the frequency with which book authors use each of these terms, as tracked by Google Books N-Gram analysis, is very similar to the frequency with which those terms are using a trademark. On the trademark side, looked at these terms just as stand-alone words; doubtless, there are some additional uses as a part of compound or unitary marks consisting of two or more conjoined terms, but this suffices to show general trends.

Dragon and wizard led the way in both N-Gram use and trademark filings, perhaps not surprisingly. The only exceptions to the order of N-Gram usage were “dwarf,” which was underrepresented in trademark filings (perhaps out of deference to those with achondroplasia or similar conditions), and “hobbit,” which was overrepresented because The Saul Zaentz Company, which acquired some Lord of the Rings-related rights in connection with a 1978 animated film, owns a bunch (in fact, every single active registration or application for that mark) of filings in the US in connection with merchandising deals.

Term Pending Registered Dead N-Gram
DRAGON 291 849 1772 .00060%
WIZARD 84 434 1530 .00035%
DWARF 6 21 44 .00032%
ELF 34 120 257 .00010%
GOBLIN 5 21 40 .00005%
MAGE 3 19 56 .00005%
TROLL 9 47 192 .00005%
ORC 3 25 30 .00001%
HOBBIT 3 51* 66 .00001%