Case 2:20-cv-02280 Document 1 Filed 08/17/20 Page 1 of 11
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF NEW ORLEANS
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`ATLANTIC NATURAL FOODS, LLC
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`v.
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`Plaintiff,
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`CHIPOTLE MEXICAN GRILL, INC., and
`CMG PEPPER, LLC
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`Defendants.
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`Civil Action No. ____________
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`COMPLAINT FOR DECLARATORY JUDGMENT
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`Plaintiff Atlantic Natural Foods, LLC (“ANF” or “Plaintiff”), by and through its attorneys,
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`for its complaint against Chipotle Mexican Grill, Inc. (“CMG”) and CMG Pepper, LLC (“CMG
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`Pepper”) alleges as follows:
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`NATURE OF ACTION AND RELIEF SOUGHT
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`1.
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`This is an action under the Declaratory Judgment Act, 28 U.S.C. § 2201, et seq.,
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`for a declaratory judgement of non-infringement of Defendants’ CHIPOTLE trademarks. Plaintiff
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`seeks a declaration that its use of the term “Chipotle Bowl with Black Beans” as a product
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`description on a packaged plant-based food product (the “Product”) does not infringe Defendants’
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`rights in the CHIPOTLE trademarks.
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`2.
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`This action arises out of Defendant CMG’s demands that ANF cease selling its
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`Product and all related advertising that contain the term “Chipotle Bowl”, and further demands
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`that ANF agree to never use the term “Chipotle Bowl” or “Chipotle” as a source identifier on
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`ANF’s packaging, advertising, or website.
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`PARTIES
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`3.
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`Atlantic Natural Foods, LLC, is a Delaware limited liability company having its
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`principal place of business in Nashville, North Carolina.
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`4.
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`Upon information and belief, Chipotle Mexican Grill, Inc., is a corporation
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`organized under the laws of Delaware, having its principal place of business in Denver, Colorado.
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`5.
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`Upon information and belief, CMG Pepper, LLC, is a limited liability company
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`organized under the laws of Colorado, having its principal place of business in Newport Beach,
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`California.
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`JURISDICTION AND VENUE
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`6.
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`This Court has jurisdiction over the subject matter of this action pursuant to 28
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`U.S.C. §§ 1331, 1332, and 1338. The claims alleged in this Complaint arise under the Declaratory
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`Judgment Act, 28 U.S.C. § 2201, and the Lanham Act, 15 U.S.C. §§ 1052 and 1125, et seq.
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`Moreover, this Court possesses diversity jurisdiction pursuant to § 1332 because Plaintiff is
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`completely diverse from Defendants and the amount in controversy exceeds $75,000.
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`7.
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`This Court has personal jurisdiction over Defendants because, upon information
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`and belief, Defendants have established minimum contacts with this forum and further, Defendants
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`have substantial, continuous, and systematic contacts with the State of Louisiana. Upon
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`information and belief, Defendant CMG operates at least ten restaurants located in the State of
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`Louisiana. In addition, upon information and belief, Defendant CMG operates at least five
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`restaurants in the greater New Orleans area. Further, Defendant CMG has directed infringement
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`allegations and enforcement actions to Plaintiff’s products which are sold to consumers in this
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`District. Upon information and belief, Defendant CMG Pepper is the record owner of all the
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`asserted Chipotle Marks, Defendant CMG is the exclusive licensee of the Chipotle Marks used in
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`Defendant CMG’s restaurant operations in this District, and Defendant CMG Pepper controls the
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`nature and quality of the goods sold by Defendant CMG under the Chipotle Marks, wherein
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`Defendant CMG Pepper has directed and authorized Defendant CMG to exclusively use the
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`Chipotle Marks across the United States and specifically in this District. By virtue of these actions
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`and contractual relationships, Defendants have purposefully availed themselves of the privilege of
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`conducting business in this state and in this judicial District.
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`8.
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`Venue is proper in this District under 28 U.S.C. § 1391(b) and (c) because, upon
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`information and belief, a substantial part of the events giving rise to Plaintiff’s claims occurred in
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`this District and because the Defendants are subject to personal jurisdiction in this District.
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`Specifically, the Product which Defendant CMG alleges to be infringing is sold within the state of
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`Louisiana, including within this District.
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`9.
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`An actual case or controversy exists between the parties. Defendant CMG has
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`repeatedly threatened to take legal action against ANF, has asserted that ANF is engaging in acts
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`of trademark infringement and unfair competition, and has demanded that ANF immediately cease
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`and desist from selling the Product.
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`GENERAL ALLEGATIONS
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`10.
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`ANF sells shelf-stable, sustainable, plant-based food products to persons desiring a
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`plant-based diet or who prefer a vegetarian lifestyle. Many of these products, including the
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`Product, are sold under the Loma Linda brand as further described below, and as shown in Exhibit
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`A attached hereto. In the United States, ANF products are sold throughout a wide range of retail
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`outlets, including Costco, Walmart, Target, Food Lion, Albertson’s, Kroger, Publix, and other
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`stores, as well as through online sales via Amazon.
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`11.
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`Upon information and belief, Defendant CMG operates numerous Mexican-themed
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`restaurants under the CHIPOTLE brand.
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`12.
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`Upon information and belief, CMG Pepper, LLC, is an affiliated company to
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`Defendant CMG and is the record owner of U.S Registration Nos. 2,317,718, 2,317,719,
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`3,325,609, 3,523,738, 3,412,092, 3,618,866, 3,618,869, 3,622,272, 3,698,498, 3,698,499,
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`3,779,316, and 3,779,317 for the mark CHIPOTLE in International Classes 29, 30, and 43, for use
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`in connection with various restaurant foods and restaurant services (the “Chipotle Marks”), as well
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`as several other marks. Defendant CMG Pepper became the record owner of the Chipotle Marks
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`by an assignment of those marks from Defendant CMG dated September 30, 2019, and recorded
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`in the U.S. Patent and Trademark Office on October 17, 2019. True and correct copies of the
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`foregoing registrations from the U.S. Patent and Trademark Office Trademark Status and
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`Document Retrieval (TSDR) system are attached hereto as Exhibit B. A true and correct copy of
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`the recorded assignment of the Chipotle Marks to Defendant CMG Pepper is attached hereto as
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`Exhibit C.
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`13.
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`Upon information and belief, Defendant CMG is the exclusive licensee of the
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`Chipotle Marks via license from Defendant CMG Pepper.
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`14.
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`ANF designed its packaging for the Product to be consistent with the blue Loma
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`Linda brand that is applied across a wide range of packaged plant-based products as shown in
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`Exhibit A. Among the product descriptions sold under this branding style are Chipotle Bowl with
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`Black Beans, Pad Thai with Konjac Noodles, Taco Filling, Thai Green Curry with Chik’n and
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`Rice, Sloppy Joe, Hearty Stew with Meatless Beef Chunks, Chorizo, and TUNO Thai Sweet Chili.
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`15.
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`A more detailed image of the Product is attached hereto as Exhibit D, which
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`includes the blue Loma Linda brand packaging and a product description “Chipotle Bowl with
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`Black Beans”.
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`16.
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`ANF describes the Product as “Chipotle Bowl with Black Beans”, because a
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`primary flavoring spice in the Product is the chipotle pepper. The ingredient list on the rear side
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`of the Product packaging includes water, non-GMO textured soy protein, brown rice, diced
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`tomatoes, chipotle paste (water, tomato paste, chipotle pepper puree (water, chipotle peppers), salt,
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`onion, paprika, spices, turmeric, garlic, sesame seed oil, vinegar), black beans, diced red bell
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`peppers, sweet corn, onion, salt, lemon juice, coriander, cumin, garlic powder, black pepper, chili,
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`spices, and yeast extract. An image of the rear side of the Product packaging is attached hereto as
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`Exhibit E.
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`17.
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`By letter dated April 16, 2020, counsel for Defendant CMG wrote to ANF counsel
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`and claimed that ANF’s sale of the Product constituted trademark infringement and unfair
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`competition in violation of federal and state law, including the Lanham Act, demanding that ANF
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`cease all use of “Chipotle Bowl” on packaging and advertising. Counsel for Defendant CMG
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`further demanded that ANF’s pending trademark application for “Chipotle Bowl”, U.S.
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`Application No. 88/837,666 (the “ANF Application”), be expressly abandoned. Counsel for
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`Defendant CMG further threatened to “immediately commence litigation for damages without
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`further notice to Atlantic”. A true and correct copy of Defendant CMG counsel’s April 16, 2020,
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`letter is attached hereto as Exhibit F.
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`18.
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`By letter dated April 30, 2020, counsel for Plaintiff responded on behalf of ANF
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`and explained why ANF’s Product description of “Chipotle Bowl with Black Beans” is descriptive
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`of the Product, that the Product packaging under ANF’s Loma Linda brand made consumer
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`confusion unlikely apart from any descriptive use of the word “chipotle”, and that there was little
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`chance that consumers would believe that there is some sponsorship or affiliation with Defendant
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`CMG. A true and correct copy of ANF counsel’s April 30, 2020, letter is attached hereto as Exhibit
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`G.
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`19.
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`By letter of May 4, 2020, counsel for Defendant CMG reiterated its demands and
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`further claimed that ANF’s Product was “likely to dilute” the Chipotle Marks. The letter further
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`stated that the ANF Application “forecloses any attempt to now argue descriptive fair use”. A true
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`and correct copy of Defendant CMG counsel’s May 4, 2020, letter is attached hereto as Exhibit H.
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`20.
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`By letter of August 4, 2020, counsel for Defendant CMG reiterated its demands and
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`further noted that the ANF Application was refused registration under Section 2(d) of the Lanham
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`Act and that such refusal was “in accord with” Defendant CMG’s contention that the ANF Product
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`constituted trademark infringement and dilution. Counsel for Defendant CMG further stated that
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`“in order for your client to avoid legal action, we reassert our demands against Atlantic a final
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`time”. A true and correct copy of Defendant CMG counsel’s August 4, 2020, letter is attached
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`hereto as Exhibit I.
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`21.
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`Defendant CMG’s allegations set forth in Exhibits F, H, and I assert infringement
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`by Plaintiff in this judicial District, because Plaintiff, through retail and online sources, sells the
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`allegedly infringing Product in this District.
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`22.
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`On August 14, 2020, ANF filed its request with the U.S. Patent and Trademark
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`Office (USPTO) to expressly abandon the ANF Application. A true and correct copy of the request
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`for express abandonment of the ANF Application is attached hereto as Exhibit J.
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`23.
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`Defendant CMG’s repeated allegations that ANF has infringed the Chipotle Marks
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`and its demands that ANF stop selling the Product created a reasonable apprehension of litigation,
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`and accordingly, there exists an actual case or controversy.
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`24.
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`Defendant CMG’s demands and threats have placed a cloud over ANF’s rights to
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`continue selling the Product and to fairly use the descriptive phrase “Chipotle Bowl with Black
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`Beans” on its chipotle-containing product.
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`25.
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`ANF’s use of the term “Chipotle Bowl with Black Beans” is a fair and entirely
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`descriptive manner of informing the consuming public of the contents of the Product. Consumers
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`would not likely perceive that such a descriptive term is an indicator of source, particularly in view
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`of the distinctive blue packaging and prominent display of such description under ANF’s Loma
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`Linda brand. ANF’s use of “Chipotle with Black Beans” as a truthful and accurate description of
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`its Product does not constitute a “trademark use,” and it is not likely to cause confusion or
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`deception among consumers.
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`26.
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`In view of Defendant CMG’s threats and allegations, ANF is entitled to a judicial
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`declaration that: (a) the description of the ANF Product as a “Chipotle Bowl with Black Beans” is
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`merely descriptive of the contents of the Product and does not function as an indicator of source;
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`(b) there is no likelihood of confusion as to source, sponsorship, or affiliation between ANF’s use
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`of “Chipotle Bowl with Black Beans” on the Product and Defendants’ Chipotle Marks; and (c)
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`ANF’s use of the term “Chipotle Bowl with Black Beans” on the Product does not infringe any of
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`Defendants’ trademark rights in the asserted Chipotle Marks, does not constitute unfair
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`competition under federal or state law, and does not constitute dilution of the asserted Chipotle
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`Marks.
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`FIRST CLAIM FOR RELIEF
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`(Declaratory Judgement of No Federal Trademark Infringement, No Unfair
`Competition, and No Dilution)
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`27.
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`Plaintiff repeats and realleges the allegations contained in paragraphs 1 to 26 of this
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`Complaint as if fully set forth herein.
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`28.
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`Defendant CMG claims that ANF’s sale of the Product described as a “Chipotle
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`Bowl with Black Beans” constitutes federal and common law trademark infringement, unfair
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`competition, and dilution, and, under a threat of litigation, demands that ANF cease selling the
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`Product in United States commerce.
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`29.
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`An actual, present, and justiciable controversy exists between ANF and Defendant
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`CMG and Defendant CMG Pepper concerning ANF’s use of the term “Chipotle Bowl with Black
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`Beans” in connection with the Product.
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`30.
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`ANF seeks a declaratory judgment from this Court that the description of the ANF
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`Product as a “Chipotle Bowl with Black Beans” is merely descriptive of the contents of the Product
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`and does not function as an indicator of source.
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`31.
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`ANF seeks a declaratory judgment from this Court that there is no likelihood of
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`confusion as to source, sponsorship, or affiliation between ANF’s use of “Chipotle Bowl with
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`Black Beans” on the Product and the Chipotle Marks.
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`32.
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`ANF seeks a declaratory judgment from this Court that ANF’s use of the term
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`“Chipotle Bowl with Black Beans” on the Product does not infringe any of Defendants’ trademark
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`rights in the asserted Chipotle Marks.
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`33.
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`ANF seeks a declaratory judgment from this Court that ANF’s use of the term
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`“Chipotle Bowl with Black Beans” on the Product does not constitute unfair competition under
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`federal or state law.
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`34.
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`ANF seeks a declaratory judgment from this Court that ANF’s use of the term
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`“Chipotle Bowl with Black Beans” on the Product does not constitute dilution of the asserted
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`Chipotle Marks.
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`35.
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`ANF seeks a declaratory judgment that Defendants have suffered no, and will not
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`suffer any, damages, loss of goodwill, or dilution by blurring or tarnishment as a result of the sale
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`of the Product described as a “Chipotle Bowl with Black Beans”, and that Defendants are not
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`entitled to any injunctive relief or damages under 15 U.S.C. § 1125, or other federal or state unfair
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`competition laws.
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff prays that the Court enter judgment in its favor as follows:
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`A.
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`declaring that ANF’s conduct, including its description of the ANF Product as a
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`“Chipotle Bowl with Black Beans” is merely descriptive of the contents of the Product and does
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`not function as an indicator of source;
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`B.
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`declaring that there is no likelihood of confusion as to source, sponsorship, or
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`affiliation between ANF’s use of “Chipotle Bowl with Black Beans” on the Product and the
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`Chipotle Marks;
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`C.
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`declaring that ANF’s use of the term “Chipotle Bowl with Black Beans” on the
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`Product does not infringe any of the Chipotle Marks;
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`D.
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`declaring that ANF’s use of the term “Chipotle Bowl with Black Beans” on the
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`Product does not constitute unfair competition under federal or state law;
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`E.
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`declaring that ANF’s use of the term “Chipotle Bowl with Black Beans” on the
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`Product does not constitute dilution by blurring or tarnishment of any of the Chipotle Marks; and
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`F.
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`declaring that Defendants have suffered no, and will not suffer any, damages, loss
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`of goodwill, or dilution by blurring or tarnishment as a result of the sale of the Product described
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`as a “Chipotle Bowl with Black Beans”, and that Defendants are not entitled to any injunctive
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`relief or damages under 15 U.S.C. § 1125, or other federal or state unfair competition laws.
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`G.
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`H.
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`awarding Plaintiff its costs, expenses and attorneys' fees in this action; and
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`awarding such other further relief to which Plaintiff may be entitled as a matter of
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`law or equity, or which the Court deems to be just and proper.
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`Respectfully submitted,
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`PHELPS DUNBAR LLP
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`BY:
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`/s/ Warner J. Delaune
`Warner J. Delaune, (LA Bar #20780)
`400 Convention Street, Suite 1100
`Baton Rouge, Louisiana 70802
`Telephone: 225-376-0214
`Telecopier: 225-381-9197
`Email: warner.delaune@phelps.com
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`and
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`BY:
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`/s/ Christopher K. Ralston
`Christopher K. Ralston, (LA Bar #26706)
`Lindsay Calhoun, (LA Bar #35070)
`Canal Place | 365 Canal Street, Suite 2000
`New Orleans, Louisiana 70130-6534
`Telephone: 504-566-1311
`Telecopier: 504-568-9130
`Email: ralstonc@phelps.com
`lindsay.calhoun@phelps.com
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`Attorneys for Atlantic Natural Foods, LLC
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`Judgment (“Complaint”), that I am authorized to make this Verification on behalf of Plaintiff
`Case 2:20-cv-02280 Document 1 Filed 08/17/20 Page 11 of 11
`Atlantic Natural Foods, LLC, and that the factual allegations contained in Paragraphs 1-35 of the
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`Complaint are true and based on personal knowledge or information available to me which I
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`believe to be true to the best of my knowledge, information and belief. This statement is made
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`subject to the penalties of 28 U.S.C. § 1746 relating to unsworn declarations under penalty of
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`perjury.
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`Executed on Augustiz 2020.
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`J. Doyglés . ines, Manager
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