A Los Angeles-based chain of burger restaurants has found nothing savory about a North Side Chicago restaurant’s use of the word “umami” to describe its own spin on an Asian-inspired hamburger.
Umami Burger Licensing USA LLC, parent company of the Umami Burger-branded restaurants, filed a complaint on June 17 in federal court in Chicago against the owners of the BopNGrill, 6604 N. Sheridan Road, Chicago, over that restaurant’s inclusion of a menu item it calls its “Umami Burger.”
The Umami Burger company, part of the Umami Restaurant Group, said it has brought the action to force BopnGrill and its owners, Will Song and others associated with BopNGrill’s operating company, WSong Inc., from selling the sandwich at issue.
The Umami group says the trademark infringement action against BopNGrill is necessary “to protect one of its most valuable assets, namely, the goodwill and consumer recognition associated with its Umami Burger trademark.”
Umami Burger operates more than 20 restaurants in California, as well as in Chicago, Las Vegas and New York. The company says still more restaurants are “under development and are planned,” including in Chicago.
Through the years of growth and development, the company says its brand “has developed considerable customer recognition across the country,” and “constitutes one of URG’s most valuable assets,” which is “crucial to the continued vitality and growth of (Umami Restaurant Group’s) business.”
While the word "umami," which is Japanese in origin, generally refers to foods with a savory, meaty taste, the Umami group claims BopNGrill’s use of the word “Umami” to describe its sandwich – which, according to its menu posted online, includes truffled mushroom duxelle, sun-dried tomato confit, togarashi mayo, bacon, smoked gouda – steps on the restaurant chain’s trademark.
The Umami group’s complaint alleges BopNGrill has brushed aside repeated requests from the restaurant group to stop selling the Umami burger, delivered through cease-and-desist letters and phone calls to “several employees” at BopNGrill.
“But in no case have defendants substantively responded to (Umami Restaurant Group),” the complain asserts. “Defendants’ blatant disregard of URG’s intellectual property rights and repeated failure to respond to URG’s demands underscores defendants’ bad faith.”
The Umami group alleges this lack of responsiveness indicates BopNGrill’s “ongoing and unauthorized use of the Umami designation is intentional and done with actual knowledge of URG’s Umami Burger mark and with the intent to trade on the goodwill associated therewith.”
They said the use of the “Umami burger” name on the menu “is likely to confuse members of the public” and “lead the public to believe incorrectly that URG” is somehow associated with the BopNGrill and its umami burger.
The Umami Group’s six-count complaint against BopNGrill includes allegations of trademark infringement, false designation of origin, dilution of a famous mark, violation of the Illinois Deceptive Trade Practices Act and unfair competition.
The Umami Group asked the court to order BopNGrill to stop using the term “Umami” to describe any of its menu items, and to award the Umami Group unspecified compensatory and exemplary damages.
The Umami Restaurant Group is represented in the action by attorneys Lee J. Eulgen and Andrea S. Fuelleman of the firm of Neal Gerber & Eisenberg, of Chicago.