San Diego Trademark Attorney® Blog

Chipotle Accuses Jack In The Box Of Misusing Trademark Name

September 25, 2012

cheeseburger.jpgSan Diego - Chipotle Mexican Grill Inc. sued Jack in the Box Inc. for trademark infringement in Colorado federal court Friday, alleging the rival fast food chain stole the Chipotle name to sell chicken.

Jack in the Box has ignored Chipotle's previous demands to stop using the Chipotle trademark forever, and will not acknowledge that it is infringing the trademark, according to Chipotle's complaint.

Jack in the Box has been advertising its new Chipotle Chicken Club Combo under the Chipotle trademark, in a single line set apart from other words and phrases, and in a nearly identical font and similar color to Chipotle's trademarked red, Chipotle says.
The chain also uses a slight variation of the Chipotle trademark, "Chipotload," in a nearly identical font in various other ads for the Chipotle Chicken Club Combo. Jack in the Box uses both infringing terms in ads with no other source-identifying mark, indicating to the average consumer that the ad is associated with Chipotle, according to Chipotle.

As evidence, Chipotle pointed to a tweet from the official Jack in the Box Twitter account saying, "Introducing my Chipotle Chicken Club Combo. It comes with fries, a drink and a Chipotload of flavor."

When Chipotle wrote to Jack in the Box after noticing the unauthorized use of its trademark and demanding that its rival stop using the name Chipotle, Jack in the Box responded by saying its use of the word does not infringe Chipotle's trademark.
Jack in the Box also stated in its response that it does not currently plan any future use of "Chipotload," but did not agree to never use the mark again.

The company noted that its current use of the name Chipotle was in connection with a limited time offer that had since expired, but asserted that the use did not infringe the trademark and suggested it would use the name again in the future.

"JITB's use of Chipotle in such a prominent position, coupled with JITB's awareness of plaintiff's well-known and famous Chipotle marks, can only be explained by an intention to wrongly profit from and trade off Chipotle's valuable goodwill and reputation in the Chipotle marks," the complaint says.