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Chick-fil-A Goes Stealth in “Eat More Kale” Trademark Dispute?

Posted in Branding, Food, Infringement, Trademark Bullying, Trademarks

The question for the day is not, why did the chicken cross the road, but rather, why did the chicken file an ex parte Letter of Protest with the Office of the Deputy Commissioner for Trademark Examination Policy at the United States Patent and Trademark Office (USPTO), just a few months ago?

To get to the other side of the USPTO?  To avoid an inter partes, direct and face-to-face trademark opposition with its adversary? Because we’re talking about a chicken after all, right?

Or, perhaps no cowardice or clandestine motives at all, but instead, to conserve resources by letting the USPTO do its bidding? Or maybe, better yet, to avoid fanning the flames of negative trademark enforcement publicity? Or, how about, because it can? Other possibilities?

As you may recall, back in November of last year, we covered the trademark bullying allegations against Chick-fil-A — asserting its “Eat Mor Chikin” tagline and trademarks against Vermont resident Robert “Bo” Muller-Moore’s “Eat More Kale” tagline and trademark. So did Techdirt, Brandgeek, and IPBiz, among others, none feeling any love for Chick-fil-A’s apparent concerns.

Then, a week later, the New York Times covered the dispute too, confirming the wild chicken legs of this story. So, why hasn’t anyone yet mentioned in all this coverage, Jerry Jeff Walker’s “Taking it As it Comes” recording in 1984, with the playful “Eat More Possum, God Bless John Wayne” chorus, apparently quite popular, at least in certain circles, more than a decade prior to Chick-fil-A’s earliest claimed first use date for “Eat Mor Chikin” in 1995? Hat tip to our good friend Doug Farrow for this clever observation.

In any event, lately, I’ve been wondering about the status of the “Eat More Kale” dispute, wondering whether a law suit has been filed (none that I’ve seen, to date), whether the USPTO has refused registration of Muller-Moore’s “Eat More Kale” trademark application based on Chick-fil-A’s “Eat Mor Chikin” rights, and if not, whether a trademark opposition has been filed.

So, in preparation for an upcoming March 6th Strafford Publications webinar on the ever-popular Trademark Bullying topic, I took a quick look at the status of the “Eat More Kale” trademark application, and honestly, I was not very surprised to find that the assigned USPTO Examining Attorney found no basis for refusing registration of “Eat More Kale” on likelihood of confusion grounds, writing December 18, 2011:

“The Office records have been searched and there are no similar registered or pending marks that would bar registration  under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.”

In fact, Mintz Levin’s Copyright & Trademark Matters blog also noted this development in an update on December 18, 2011.

What is much more interesting from the present state of the file history– and far less common – is correspondence from the Office of the Deputy Commissioner for Trademark Examination Policy, dated four days later, on December 22, 2011, granting an ex parte Letter of Protest with these instructions to the assigned USPTO Examining Attorney:

“A Letter of Protest filed before publication has been granted. It has been determined that the evidence submitted by the protester is relevant and may support a reasonable ground for refusal appropriate in ex parte examination. Therefore, you must consider the following and make an independent determination whether to issue a requirement or refusal based on the objections raised in the Letter of Protest.”

Then the correspondence goes on to identify three prior registrations brought to the USPTO’s attention by the un-named protester: U.S. Reg. Nos. 2,062,809, 2,197,973, 2,538,050.

Hmmm, I wonder who the mysterious un-named stealth protester is, since the three registrations are for the “Eat Mor Chikin” marks owned by Chick-fil-A?

Of course, we could request a copy of the Letter of Protest and supporting evidence from the USPTO, using a Freedom of Information Act (FOIA) request, to be sure, but I’m thinking I’ll save the stamp. Indeed, I’d be shocked if Chick-fil-A were not behind the Letter of Protest submission and stealth strategy.

Actually, this is a pretty smart strategy, given the particular facts and circumstances of this dispute – if it works, and a likelihood of confusion refusal is made by the USPTO and sustained, it would obviate the need for a formal and very public opposition with Mr. Muller-Moore and his moral and financial supporters.

Of course, hind sight is always twenty-twenty, and here, if the registration refusal is made, I suspect Chick-fil-A will wish it had quietly filed the Letter of Protest before sending Mr. Muller-Moore the cease and desist letter. I also suspect the media attention on this one might have been more favorable to Chick-fil-A had the USPTO issued a refusal by the time it sent a cease and desist letter, even if it were discovered later that the refusal was prompted by a Chick-fil-A stealth filing.

So, stay tuned to learn how the assigned Examining Attorney exercises his “independent” judgment on this one, and whether he actually refuses registration of “Eat More Kale” based on Section 2(d) of the Lanham Act and Chick-fil-A’s “Eat Mor Chikin” registrations. What are your predictions?