Vegetarian Food Company Seeks Declaration of Noninfringement for Using “Chipotle” in Product Name

On Monday in the Eastern District of Louisiana, Atlantic Natural Foods, LLC (ANF) filed a complaint against Chipotle Mexican Grill, Inc. (CMG) and CMG Pepper, LLC (CMG Pepper) seeking a declaratory judgment of noninfringement of the defendants’ Chipotle trademarks. ANF cited CMG’s demand that it stop selling its product, the “Chipotle Bowl with Black Beans,” and agree never to make use of “Chipotle” or the “Chipotle Bowl” phrase as a “source identifier on ANF’s packaging, advertising, or website,” as the impetus for its noninfringement complaint.

ANF is a Delaware company that sells “shelf-stable, sustainable, plant-based food products to persons desiring a plant-based diet or who prefer a vegetarian lifestyle.” A range of retail outlets including Costco, Walmart, Target, Food  Lion, Albertson’s, Kroger, Publix, and online retailer Amazon sell ANF products. Its “Chipotle Bowl with Black Beans” product bears the name, it explains, “because a primary flavoring spice… is the chipotle pepper.” Defendant CMG Pepper owns multiple trademarks for “Chipotle,” which are exclusively licensed to defendant CMG, according to the complaint.

The controversy arose in April when CMG notified ANF that the marketing and sale of its “Chipotle Bowl with Black Beans,” product “constituted trademark infringement and unfair competition in violation of federal and state law, including the Lanham Act, demanding that ANF cease all use of ‘Chipotle Bowl’ on packaging and advertising.” CMG also reportedly insisted that ANF abandon its pending trademark application for the mark “Chipotle Bowl.”

ANF and CMG exchanged several subsequent correspondences, the result of which was ANF’s abandonment of the pending mark and the instant litigation.

ANF argued that its use of the phrase, “Chipotle Bowl with Black Beans” is “a fair and entirely descriptive manner of informing the consuming public of the contents of the [p]roduct.” Furthermore, the plaintiff asserted, “[c]onsumers would not likely perceive that such a descriptive term is an indicator of source, particularly in view of the distinctive blue packaging and prominent display of such description under ANF’s Loma Linda brand.” In other words, consumer confusion that the product is made or sponsored by CMG is unlikely, ANF claimed.

ANF asked the court to declare that its use of the disputed phrase “is merely descriptive of the content” of the product, that it does not violate any trademark or state or federal unfair competition law, that it does not cause “dilution by blurring or tarnishment of any of the Chipotle Marks,” and that the defendants have not and will not suffer any damages as a result of its use.

The plaintiff is represented by Phelps Dunbar LLP.