For years before its doors opened this summer in New York City, California-based Umami Burger has been dominating the West Coast food scene buzz with its innovative spin on the classic burger to highlight the umami taste.  But as is often the case, with a in rise popularity can come a rise in potential imitators; and so this June, to protect its name, Umami Burger filed a trademark infringement suit against Austin, Texas’s newly opened Umami Mia Pizzzeria, requesting by preliminary injunction that the pizza shop immediately change its name.

On August 13, Judge Sam Sparks of the U.S. District Court of the Western District of Texas denied Umami Burger’s request for a preliminary injunction because the burger joint failed to convincingly show success on the merits of its likelihood of confusion claim.

To support his decision, Judge Sparks highlighted the descriptive nature of the word “umami” to explain why Umami Burger would not likely succeed on the merits: standing alone, the word “umami” is merely descriptive.  And while “umami” may have some acquired secondary meaning tying it to the burger chain, it is “a word most ordinary consumers have never heard of at all.”

This case perfectly captures the dilemma of trying to cash in on a trendy name and use it as your trademark:  one the one hand, if the business owner does not get in front of the name’s popularity before others, the market becomes too crowded, which may end up weakening the strength of mark in the marketplace.  On the other hand, if the business owner moves too quickly, the trendy name may not conjure enough of an image in the mind of consumers tying it to the brand, and the owner could lose the battle because the name is not sufficiently well-recognized in the marketplace.

This second problem seems to be the one that undid Umami Burger’s application for preliminary injunction:  in denying the motion, Judge Sparks noted that “most ordinary customers have never heard of [“umami”] at all.”  Although the the concept of umami as a fifth taste has been floating around among foodies for over a century, the fact that most people don’t recognize the word meant to Judge Sparks that the trademark value of the word was too descriptive.  But, can a word be descriptive if most people don’t know what it describes? If the ordinary consumer does not know that the word “umami” describes a taste, does that make the mark suggestive or fanciful?  If so, then acquired distinctiveness in the marketplace is not a pre-requisite for finding the mark to be valid and capable of protection.

By combining the ordinary consumer’s unfamiliarity with “umami” with the burger chain’s promotions, success, and media coverage in its home state of California, the Northeast (for example, see here or here) and national news (touted both as one of the country’s best burger joints and a food “worth traveling for”), perhaps Umami Burger has created sufficient secondary meaning in the minds of ordinary consumers to call “umami” its own.

In the end, this case could turn on the ordinary consumer’s state of mind, and whether the word “umami” – if it is even a familiar one – has acquired any distinctiveness associating it specifically to the burger chain.  So, a call to our readers: does the word “umami” conjure up any brands in particular to you?

The case is Umami Burger Licensing USA LLC v. Umami Mia Pizzeria LLC, 13-cv-00511, U.S. District Court, Western District of Texas (Austin).