Trademark Bullies: A Game Of Chikin
One of my clients makes and sells delicious homemade pies. This client created a trademark tag line, “Eat More Pie!” to promote its wares. To my delight, this client contacted me BEFORE adopting the tagline, and hired me to perform a search for marks that might conflict with its use and registration of this trademark. I searched and did not find a mark that would conflict, in my opinion, with my client’s use and registration of “Eat More Pie!” So, my client started selling pies and we prepared and filed an application for federal trademark registration.
Unbeknownst to us, the application popped up on the radar of trademark attorneys representing CFA, better known as Chick-Fil-A. Many of us are familiar with the Chick-Fil-A clever and award winning ad campaign in which forlorn cows exhort us to “Eat Mor Chikin”.
Shortly after we filed my client’s trademark application, and months before it was examined, a cadre of CFA trademark attorneys submitted to the Patent and Trademark Office a 5 page letter of protest with 75 pages of exhibits exhorting the Office to refuse to register Eat More Pie! on the ground that it was too similar to Eat Mor Chikin. In due course, the application was examined by an examining attorney who, notwithstanding the letter of protest, reached the same conclusion that I did – no conflict -and approved the application for publication of the mark for Opposition. The public has 30 days from the publication date to oppose registration of the published mark.
The day before the Eat More Pie! mark was published, the CFA attorneys took a more direct approach and sent my client a sternly worded cease to exist letter with a ten day response deadline. My client responded by not responding, and waited for the inevitable notice that CFA was opposing registration of Eat More Pie! It never came, and the 30 day opposition period expired.
Trademark owners have a duty to enforce their trademarks against infringement. Failure to enforce can weaken or extinguish trademark rights. However, trademark owners risk rebuke in the court of public opinion if they are perceived as being overly aggressive in asserting their trademark rights – sometimes being tagged as trademark bullies. It is a fine line sometimes, as CFA learned when it filed a letter of protest in an application to register Eat More Kale filed by an artist who printed the phrase on t-shirts. (CFA has registered Eat Mor Chikin for clothing, including shirts) The protest letter persuaded the Patent and Trademark Office, which had determined that there was no conflict, to reverse itself and refuse registration of Eat More Kale because it was too similar to Eat Mor Chikin. A team of attorneys from the University of New Hampshire stepped in and, pro bono, persuaded the Patent and Trademark Office to withdraw the refusal to register Eat More Kale. During the battle, there was a very public debate about whether or not CFA was being a trademark bully. In December, 2014, Eat More Kale was published and CFA did not file an opposition. Instead, CFA issued a statement: “Cows like Kale too.” Maybe cows like pie, too.