On June 17th, Umami Restaurant Group Inc. (“URG”) filed a trademark infringement lawsuit against Wsong, Inc., d/b/a as bopNgrill, a Korean inspired burger restaurant located in Chicago. URG complains that BopNgrill is selling a “Umami Burger”menu item and that this creates a likelihood of consumer confusion between the two restaurants.
URG operates a chain of burger joints called Umami Burger, most of which are in California. The first location in the Midwest opened in Chicago in 2014. It owns several U.S. trademark registrations relating to UMAMI BURGER, the earliest of which was filed on August 4, 2011.
URG will likely face two hurdles in pursuing its lawsuit. First, bopNgrill opened its first restaurant in 2009 and has been at its current location since 2011. Although it is unclear when bopNgrill first sold an “umami burger,” if it was prior to the filing date of URG’s trademark application, then bopNgrill can argue that it has priority to the name “Umami Burger” in the Chicago area. That is because trademark use is the key to establishing priority in a particular territory. Although a federal trademark registration gives a trademark owner rights at the national level, those rights only start on the filing date of the application and prior use in a geographic area trumps a later-filed application where the registrant didn’t use the mark in that particular territory.
Second, umami is a descriptive term for a savory taste, which is considered one of the five basic tastes (along with sweet, bitter, sour and salty). Accordingly, bopNgrill can argue that URG’s trademark rights are weak since trademark law limits the protections given descriptive trademarks. After all, a burger joint has a right to describe its burgers as savory. This argument has more force for bopNgrill as well because it’s using “umami” in connection with a menu item rather than the store itself. Although bopNgrill is apparently not using “umami” in a strictly descriptive manner, it can assert that this case is analogous to someone trying to prevent others from selling “salty pretzels.”
This case underscores the risks of having a brand name tied to a descriptive mark which can increase the time and effort that must be expended to police the associated trademark rights.