Online Reviews Sway Judge In Trademark Dispute

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Comments on social-media sites have played roles in divorce cases, National Labor Relations Board Actions and too many defamation actions to count. Now they're also turning up as evidence in trademark disputes.

A federal judge recently granted the fast-food chain Chipotle Mexican Grill an injunction against two other restaurants in Arkansas that carry the name "Chipotles Grill." The order bans the other two restaurants, owned by entrepreneur Efren Montano, from continuing to use "Chipotle" in their names.

U.S. District Court Judge Brian Miller in the Eastern District of Arkansas ruled that the 18-year-old national chain was likely to prevail in its trademark infringement claim because consumers were confused by the other "Chipotles," which operated in Beebe and Jonesboro.

Critically, Miller ruled that posts on review sites "reflect confusion as to the ownership of defendants' restaurants."

"One Web site, www.urbanspoon.com, even lists plaintiff's Web site as the Web site of defendants' restaurants," Miller added in his written decision, issued last week.

The national Chipotle filed suit last November, arguing that the similarly named restaurants infringed on the chain's trademark. The company alleged that the Beebe location opened in late 2007, and the Jonesboro restaurant opened last March.

Chipotle included in its court papers emails from consumers, including complaints about the Montano restaurants, as well as printouts of comments and reviews that appeared on Associated Content, Topix and UrbanSpoon. The Associated Content review was of Montano's "Chipotle," but the piece referred to the restaurant by the name of the national chain, "Chipotle Mexican Grill." The critique itself was generally positive, with the reviewer complaining only that "the floor sometimes needs attention."

Not all online commenters were duped. At the Jonesboro forums on Topix.com, several users submitted comments saying that the new eatery wasn't affiliated with the national chain. "Wish it was the real Chipotle Grill," said one commenter in January 2010. "Wish this one that is coming to Jonesboro wasn't just another same ole same ole trying to deceive people under a franchise name."

  Chicago intellectual property lawyer Evan Brown, who called attention to the ruling on his blog, says the case shows how companies "should be aware of how their brands appear in social media." He adds: "Smart companies will ensure they remain aware of how their marks and overall brand identity are being put forth, even off the beaten path on the web."

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