Tasty Burger, a six-unit chain, is challenging Chipotle Mexican Grill Inc.’s decision to name its new burger concept Tasty Made, citing trademark violations.
Founded in 2010 by David DuBois and Phil Audino of The Franklin Restaurant Group, Tasty Burger operates in Boston and Washington, D.C. The restaurant serves made-to-order burgers, crispy chicken sandwiches, hot dogs and chicken nuggets, as well as beer, wine and shakes. The beef used in the burgers is raised without hormones or antibiotics, according to the company’s website.
Chipotle confirmed last month that it is planning to launch a new burger concept this fall in Lancaster, Ohio, called Tasty Made, featuring a simple menu of burgers, shakes and fries using sustainable ingredients and beef raised without hormones or antibiotics.
“This has caused a great deal of confusion among our customers and consumers in general, because Tasty Burger has no association or affiliation with Chipotle,” said DuBois, CEO of Tasty Burger Corp., based in Boston.
On July 19, Tasty Burger filed a cease and desist letter challenging Chipotle’s use of the name and logo. That, however, did not stop Chipotle from filing an application to register the Tasty Made logo and the mark “Tasty Made Burgers Shakes Fries” in a filing dated July 29.
Chris Arnold, Chipotle communications director, said the company plans to move forward with the Tasty Made name, saying they strongly believe they are on solid footing.
Arnold contends that the U.S. 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,” Arnold said.
DuBois, however, argued that Chipotle’s Tasty Made logo is “unmistakably similar” in color, shape and design to that of Tasty Burger.
DuBois said the company holds trademark registrations for the name Tasty Burger in the U.S., as well as 26 of 27 member countries within the European Union, and at least 11 other countries, including Canada, Japan and Saudi Arabia. In the U.S., the trademark registration filing is dated June 2012.
DuBois also noted that Tasty Burger and Chipotle share a landlord in one location.
“It would be reasonable to assume that they have seen our signage,” he said.
DuBois and Audino originally launched the burger brand as part of their multi-concept restaurant group, which operates The Franklin Café and Citizen Public House & Oyster Bar in Boston. A stake in Tasty Burger was acquired earlier this year by private investment firm Suleiman Holdings, and the chain is looking to raise $15 million in equity funding.
Tasty Burger is also the official burger of the Boston Red Sox, served in Fenway Park, and has a multi-year contract with Major League Baseball, the company said.
Despite what DuBois called an “obvious David and Goliath scenario,” he pledged to aggressively protect the chain’s mark.
“We cannot simply stand by and watch an enormously powerful company like Chipotle move forward with the opening of a burger restaurant with a similar name, mark and logo design,” said DuBois. “Since 2010, we have tirelessly worked to establish Tasty Burger as the beloved burger restaurant it is known to be. Our valued customers and fans from around the world have made Tasty Burger a part of their lives. We are a growing company with modest beginnings, yet we have big dreams to share our burgers with millions more as we open future Tasty Burger locations.”