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?

  • I think it’s not a legal issue, it’s an issue of what you want your brand to stand for (and how you want to spend your life). The right approach, imho, is for both sides to just walk away.

    Too much time in court, too many legal fees, too much collateral damage.

    It’s a classic Prisoner’s Dilemma, because both sides overrate the value of winning.

    • Seth, with all due respect, underdogs like Bo should be praised for NOT caving in to a trademark bully. Walking away perpetuates the problem and is why trademark bullies like Hick-fil-A are able to continue their tyrannical ways. If anyone should be walking away its Hick-fil-A’s customers. And our country’s most celebrated social leaders such as Martin Luther King, Cesar Chavez, and Susan B. Anthony certainly didn’t become so by walking away.

    • Seth, it’s also important to point out that it’s unfair to lump Hick-fil-A’s position with Bo’s. Hick-fil-A is the aggressor. Bo is simply trying (against all odds), to defend his business and intellectual property. And because he was brave enough to fight back, countless thousands of consumers are now aware of the growing problem of trademark bullies vs. small businesses. Plus, as a marketing guru you must appreciate how difficult and expensive it is to “walk away” from a brand and start over. One study I know of said it costs at least $100,000, even if you’re a small business and the new name was free. And obviously if most people fought back instead of caving in, then trademark bullies such as Hick-fil-A would be forced to abandon their lawyer-driven strategies of prospering via litigation instead of innovation. But if everyone followed your advice to walk away, the trademark bully vs. small business problem would get even worse. Do you really want more small businesses to get unfairly sued and ruined by trademark bullies? I also seriously doubt that you would walk away if your business was sued for trademark infringement by one of the owners of the 85 “squid” trademarks that are currently registered or pending at the U.S. Patent and Trademark Office. But since you’re so successful and well-known, it’s not likely you’ll be attacked by a trademark bully like Bo and countless other entrepreneurs are everyday.

  • stevebaird

    Seth, thanks for sharing your generous thoughts on this subject, your opinions are always welcome here.

    Walk aways are great when both sides are on the same page about what that means and with trademark disputes that typically implicates two separate legal issues, (1) the right to use and (2) the right to register. Creative settlements recognize this distinction.

    For example, if Mr. Muller-Moore took the first step and unilaterally walked away from the right to register, but wanted to maintain the status quo by continuing to use the Eat More Kale mark, that compromise would put Chick-fil-A in the difficult position of having to decide whether to rachet up the stakes and suffer the spotlight of negative publicity to actually try and stop the use in a lawsuit.

    But, what if one side isn’t willing to walk away even in the face of a more than reasonable unilateral compromise by the other? Perhaps the unrelenting party taking it further at that point would cement appropriate application of the trademark bully label and the resulting collateral damage.

  • Beth Schultz

    Kale ISN’T chicken (notice correct spelling) and that is that. Not competition in any format, no improper spelling or intention on Bo’s part. The Corporation has decided to bully the small business man with their legal squadron in an attempt to shut him down. Hello…this is still America isn’t it? I am beginning to wonder, this really is a non issue and The Corporation is wasting everyone’s time and money simply because they can. Shame on you for bullying a guy who makes T shirts NOT a food product for cripes sake. Go Team Bo, I hope you win a chance to appeal and reverse the trademark issues.

  • Deanna Stillings

    Why would anyone think they we even near to being the same? That chicken company is nutz!!!

  • Bo Muller-Moore

    Glad to have such heavy hitters weighin’ in on this.

    Humbled from Vermont.