Hey, Chick-fil-A: Eat (More) Crow! This is not Trademark Infringement.
Insight November 29, 2011
Do you imagine crow tastes good with chicken? Maybe we should ask the legal eagles representing Chick-fil-A, whom I suspect now have first-hand knowledge of the answer to that question.
A week ago today, I posted a link on Brand Geek’s Facebook page (Like it, please!) to a blog post on Blurtabout Chick-fil-A’s apparent bullying of Robert (“Bo”) Muller-Moore over his use of EAT MORE KALE. You see, Chick-fil-A claims EAT MORE KALE infringes on its EAT MOR CHIKIN marks. Clearly the dispute deserves more than a Facebook mention, although I must admit it feels almost like old news now. After all, there have been articles about the case on Huffington Post, Gothamist, Atlanta Business Chronicle, CBS Connecticut, Daily Kos, CNBC, the Atlantic Wire Yahoo! News, Burlington Free Press (twice!) and countless blogs, including one of my favorites, Duets Blog. Today, no fewer than three friends wrote to me about the case (thank you Topher Marlatt, Michael Tschupp and Dick Troll) and another friend, Jim Tyre, posted about it on the e-Trademarks list serv, so I knew it warranted a deeper peek under the feathers.
So, what’s got the chickens clucking? Chick-fil-A owns 6 trademark registrations for EAT MOR CHIKIN. Four registrations protect the words EAT MOR CHIKIN for restaurants (here and here) and clothing (here andhere). Two registrations protect the cow logo shown above for restaurants (here) and clothing (here). The earliest EAT MOR CHIKIN registration was obtained in 1996 and the most recent in 2001 and all of them areincontestable. Of course, ‘that don’ mean nuttin’ (as them cows wuld say) unless consumer confusion is likely.
I just don’t see it. These two brands have co-existed for 13 years. Has anyone ever been confused during that time? Does anyone currently think that EAT MORE KALE is affiliated with or sponsored by Chick-fil-A? The national media sure doesn’t seem to think so. Nor do 7,199 signatories on a Petition created by Jeff Weinstein on Change.org:
Vermont’s EAT MORE KALE is a small, eco-friendly t-shirt business with a mission to promote sustainable food messages. The company’s sole proprietor, Bo Muller-Moore, has used the EAT MORE KALE logo in his t-shirt designs for more than 10 years, and he recently applied for a federal trademark on his business name. A federal trademark would block other artists from copying his design (which has happened in the past) and protect the livelihood he’s worked so hard to build.
But if Chick-fil-A, a multi-million dollar fast food company, has its way, Muller-Moore won’t be able to protect his business. The Corporate Goliath has threatened to block EAT MORE KALE’s trademark attempt and shut the business down. . . Back in 2006, the fried chicken giant’s lawyers sent Muller-Moore a cease-and-desist letter, ordering him to stop using the EAT MORE KALE logo and send Chick-fil-A all of his t-shirts. After Muller-Moore obtained legal counsel of his own, Chick-fil-A backed down . . .
So the chicken plays chicken, only it’s bluffing?!
Maybe this chicken’s lawyers haven’t heard of laches? Latches keep most chickens penned in, while laches will keep these chickens shut out. The legal doctrine of laches prevents someone from succeeding on a claim that they already made and failed to follow through on, so long as the threatened party would be harmed were the claim now allowed. Since Muller-Moore continued to sell EAT MORE KALE products and build brand equity in his brand (I saw one of his t-shirts on the TEDActive stage earlier this year), it sure seems reasonable to presume he would be harmed by Chick-fil-A’s pursuit of a trademark infringementclaim at this time. Sadly for Bo, the doctrine of laches does not apply to Opposition proceedings before theTTAB, which cannot be brought before a mark is Published for Opposition. Since Muller-Moore just applied to federally register his EAT MORE KALE trademark, which he’s used for the past 13 years (since 01/01/1998) on stickers, apparel, and t-shirt imprinting and screen printing services. According toEatMoreKale.com, it appears that he’s once again ruffled the feathers of Chick-fil-A.
Well, Bo; here’s hoping your case never makes it further than the court of public opinion, in which case I’d say you’ve won (again!).
Legal considerations are not the only thing to take into account when accessing a perceived infringement. The degree of threat actually posed to one’s business and the potential PR backlash also should be considered, among other things.