Everything is Bigger in Texas

A trademark battle royale has hit Austin, Texas and it doesn’t look like this legal fight will end anytime soon. Umami Burger, a West Coast hamburger chain with 15 locations nationwide with plans to open more 13 more restaurants this year have filed a lawsuit for trademark infringement against Umami Mia Pizzeria, a newly opened Italian restaurant and pizzeria in Austin, Texas. The burger joint is alleging that the mark, Umami Mia Pizzeria, used by the Austin, TX restaurant is likely to cause confusion with their “Umami Burger” mark, which is registered with the U.S. Patent & Trademark Office (USPTO). Additionally, Umami Burger requested the court to issue a preliminary injunction to prevent the Austin, TX restaurant from using the word “umami” and change their name immediately. 

On August 13, 2013, Judge Sam Sparks denied the injunction and allowed Umami Mia Pizzeria to continue using its mark while the case is being adjudicated. In support of his ruling, Judge sparks stated that not only is “umami” a common word that cannot be monopolized, the restaurants are located in different states and serve different types of cuisine.  

This is not the first time Umami Burger has ran into an issue regarding the descriptiveness and commonality of its mark. During the federal trademark registration process, the owner of Umami Burger was issued an office action because the examiner believed the mark was merely descriptive of the features, ingredients and purpose of applicant’s services. The examiner stated:

The word UMAMI is defined as: “a taste that is characteristic of monosodium glutamate and is associated with meats and other high-protein foods. It is sometimes considered to be a fifth basic taste along with sweet, sour, salty, and bitter.”  The word BURGER is defined as: “a sandwich consisting of a bun, a cooked beef patty, and often other ingredients such as cheese, onion slices, lettuce, or condiments.”  See attached dictionary definitions.  Applicant’s restaurant is a BURGER restaurant.  The primary food item found on the menu (see specimen of use) is BURGERS.  The word UMAMI describes a flavor of food.  In this case, it specifically describes a flavor found in applicant’s BURGERS.  As such, the proposed mark merely describes the identified goods and, thus, registration on the Principal Register is refused.

The mark did eventually register after Umami Burger’s trademark attorney argued that the applied-for mark was not descriptive, but rather suggestive. A suggestive mark is one that requires imagination, thought, and perception to reach a conclusion as to the nature of the goods or services in connection with which it is used. Suggestive marks are allowed to be registered with the USPTO.

Even though the mark is federally registered, it is still a weak mark and may have some trouble holding up in court. Even though preliminary injunction was denied, this Texas-sized lawsuit is far from over.