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Chick-fil-A to Land in Trademark Bully Court?

Posted in Advertising, Articles, Branding, Dilution, Food, Infringement, Law Suits, Marketing, Trademark Bullying, Trademarks, USPTO

As Chick-fil-A enters the Twin Cities market, it has begun another creative billboard campaign touting the “End of Burgerz — Koming Soon,” with no sign of the “Eat Mor Chikin” campaign, as of yet anyway. Bo Muller-Moore of Vermont — owner of the “Eat More Kale” trademark – probably would prefer that the billboards read: “The End of Trademark Bullying — Koming Soon!”

As you know, we’ve been writing about the highly publicized trademark bullying allegations associated with Chick-fil-A’s unrelenting pursuit of Vermont-Native Bo Muller-Moore’s “Eat More Kale” trademark, for a couple of years now:

I’m on record as viewing the “Eat Mor Chikin” v. “Eat More Kale” trademark enforcement claim as baseless and an example of overreaching, yet Chick-fil-A has succeeded in obtaining the USPTO’s powerful assistance in preventing registration of the Eat More Kale trademark. First, with the granting of a dubious Letter of Protest, then with a registration refusal being made by the Examining Attorney who had previously seen no trademark conflict, and most recently with the Managing Attorney at the USPTO taking over the file to reinforce the likelihood of confusion refusal and add even more substantive bases for refusal.

Given those developments, it’s presently looking like a tough road at the USPTO, so I’ve been wondering outloud whether Mr. Muller-Moore will ask a federal district court judge to declare that the “Eat More Kale” mark is not infringing or diluting Chick-fil-A’s “Eat Mor Chikin” mark, since a federal court decision declaring no likelihood of confusion would compel the USPTO to withdraw the likelihood of confusion refusal based on Chick-fil-A’s “Eat Mor Chikin” mark. Doing so also could provide a forum where monetary relief could be awarded to Bo if Chick-fil-A’s claim are found baseless and overreaching.

A couple of weeks ago Bo Muller-Moore updated his trademark counsel of record information at the USPTO to add Ashlyn J. Lembree of the University of New Hampshire IP & Transaction Clinic.

The current USPTO prosecution file shows that Mr. Muller-Moore has a September 7, 2013 deadline to respond to the Managing Attorney’s latest bases for registration refusal, so we’ll know soon enough whether Muller-Moore suspends his pending application to bring a declaratory judgment action in federal district court in search of a more friendly forum or whether he tries once more at the USPTO with his newly expanded legal team.

Where do you come down on the “Eat Mor Chikin” v. “Eat More Kale” trademark dispute? And, what action would you recommend to Bo?