Two months ago, our attention seized on a nutty and woefully deficient USPTO examination of a trademark application to register — Mr. Wonderful — for roasted nuts, and nut-based snack foods, among other food products, given the prior WONDERFUL trademark rights owned by these folks:

Just like clockwork, events now appear to be playing out as expected, so keep your eyes peeled and your watches synchronized. Last Friday, The Wonderful Company LLC, filed an extension of time to oppose registration, so the new deadline for opposition is September 8, 2018.

We’ll likely soon see whether a Letter of Protest was filed behind the scenes, giving the USPTO a chance to correct this mistake and issue a likelihood of confusion refusal —  as it’s hard to imagine the Examining Attorney’s failure to issue a refusal won’t be considered clear error, so stay tuned.

Wonderful likely has made contact with Mr. Wonderful by now — my question would be, how hard will Mr. Wonderful play to salvage the other food items currently in the identification of goods?

What do you think, are these goods sufficiently related to roasted nuts to become toast, as well?

Jellies and jams; Banana chips; Dried fruit-based snacks; Fruit preserved in alcohol; Nut butters; Olive oil for food; Potato chips; and Yogurts.

It’s a wonderful life, collaborating with brand owners and marketing teams to advance their goals.

Our work for brand owners also involves a collaboration of sorts with the U.S. Trademark Office.

We work with the USPTO to obtain registrations for our clients and this triggers USPTO obligations.

As such, when examining applications, the USPTO must search its records for conflicting marks.

It also must refuse applications for marks that are confusingly similar to prior registered marks.

Mistakes happen, but sadly, if the USPTO misses a proper refusal, the brand owner holds the bag.

So, when the USPTO doesn’t do its job well, the brand owner is put in a position to spend money.

Several weeks ago, I expressed near certainty that the USPTO would refuse registration of Kevin O’Leary’s (of Shark Tank fame) application to federally register his nicknameMr. Wonderful — given another’s well-established, federally-registered trademark rights in WONDERFUL for nuts:

Surisingly, the USPTO has issued no refusal, and the Mr. Wonderful mark -for nuts- has been approved for publication. If you’re at a loss how that can be, here is the USPTO’s search summary.

As it reveals, the “session duration” lasted 218 seconds; not a single “wonderful” mark was “viewed” during examination, yet hundreds of “mr” trademark records were, maybe even him?

The “mr” portion of the search was narrowed to focus on the nuts class of goods (IC 29), but strangely this wasn’t done for the “wonderful” portion, leading to zero “wonderful” viewed records.

Let’s just call this oversight for what it is, not exactly a wonderful trademark examination by the USPTO — literally and figuratively. The Mr. Wonderful approval — for nuts –looks like clear error.

Were we in Wonderful’s camp, we’d be thinking about a Letter of Protest to have the USPTO issue the likelihood of confusion refusal, because it costs peanuts compared to a full-blown opposition.

Trademark types, would you get crackin’ on a Letter of Protest, were you holding Wonderful’s bag?

Marketing types, how nuts would you be spending a lot more than peanuts, if the USPTO doesn’t acknowledge clear error and issue the refusal, to help make a Notice of Opposition unnecessary.

To the extent you’re in Mr. Wonderful’s camp, how would you approach a registration refusal, knowing that 15 of the 16 live “wonderful” marks at the USPTO for nuts are Wonderful’s marks?

WatchingCreation

This past weekend, with what appears to be our first lasting snowfall, I enjoyed following my daughter around the chilly alleys of downtown Minneapolis while she created for her photography class. As you can see from the moment I captured, she inspired me to create a bit too.

Thankfully I’m not being graded for my efforts.

Yet, as I reflected on capturing my daughter’s creativity in action, it occurred to me that the results of the creative efforts of our friends in the branding world are frequently watched too, but not always by those with as good of intentions as mine toward my daughter’s activities.

I’m not talking about jealous peers or green-eyed monsters or even the talented and skilled judges who review and evaluate creative submissions for industry awards. The watchers I’m thinking about have a different perspective as the IP counsel for brand owners who evaluate potential enforcement targets as new creative works endlessly flow into the marketplace.

One type or method of this kind of watching is automated and quite routine in the IP world. Many professional trademark search firms provide services allowing brand owners and/or their counsel the ability to be alerted when another files an application seeking registration of a mark, when the new creation has the potential to cause likely confusion.

Receiving a cease and desist letter after an application is filed is a pretty reliable sign that the brand owner behind the letter is watching — either the applicant directly or the penumbra surrounding the brand owner’s trademark rights, to maintain or grow a vibrant scope of rights.

Sophisticated brand owners also are well-versed in using, where appropriate, a more stealth approach of watching with the letter of protest strategy. The letter of protest option can avoid the need for direct interaction with the trademark applicant because it positions the USPTO to do the brand owner’s bidding by erecting road blocks to registration.

Of course, if the concern stems from more than registration and includes a concern of use too, then the brand owner eventually will need to unmask and reveal its concerns directly to the applicant. Having said that, having the USPTO on your side as a brand owner watching the filings of concerning marks can be a powerful tool when one decides to finally unmask and speak up.

With these IP realities in mind, are you watching or being watched or both?

Best to do the former and assume the latter.

It’s that time of year again, the Midwest IP Institute is back in action for the 14th year in a row, and if you’re attending you’ll receive this little gem, the 13th Edition of The IP Book:

2015IPBookCover

So, don’t miss it, Gerard Rogers, Chief Judge of the TTAB will provide us with News from the Trademark Trial and Appeal Board, and he will also share his perspectives on the implications of the Supreme Court’s B&B Hardware Decision on TTAB practice.

Our friend John Welch of the TTABlog will be joining me on the podium for the annual review of trademark cases: The Year in Trademark Law.

In addition, my partner and fellow DuetsBlogger Brad Walz will provide valuable insights on how to avoid the cost and expense of trademark oppositions altogether by utilizing ex parte Letters of Protest at the USPTO.

Please join us this Thursday and Friday at the Minnesota Continuing Legal Education Center in downtown Minneapolis for two days of intellectual property education and networking.

Finally, if you’re wanting a preview of the B&B Hardware discussion, there is a webinar tomorrow you won’t want to miss, my partner and fellow DuetsBlogger Tiffany Blofield is teaming up again with Caldwell Camero of General Mills to discuss their perspectives on how the Supreme Court’s B&B Hardware decision has changed our trademark world.

Just so you know, this is not the post I planned to write today. Hat tip to you, Bo!

It has been exactly one year since Bo Muller-Moore — the “Eat More Kale” guy from Vermont — submitted a comprehensive 71-page response to the registration refusal based on “Eat Mor Chikin” issued by the USPTO on March 27, 2012, after a dubious Letter of Protest was filed by Chick-fil-A and surprisingly granted by the USPTO on December 22, 2011.

Given my interest and coverage of this story (here, here, here, here, here, here, and here), and my meaty devotion to our dear readers, I’ve been periodically checking in on the status of Mr. Moore’s EAT MORE KALE application, anxiously awaiting the USPTO’s response to Moore’s thorough missive. So my plan was to write today about how the USPTO has laid a real egg that it continues to sit on — taking no action at all for an entire year, making me want to raise this question again (albeit in a different light): Is the USPTO acting like a (surrogate) trademark bully?

That is all unnecessary now, since the USPTO just yesterday appears to have approved Mr. Moore’s EAT MORE KALE application for publication, opening it up for third party challenge:

“Status: Approved by the examining attorney for publication but has not yet published for opposition. Although rare, withdrawal of approval prior to publication may occur after final review. The opposition period begins on the date of publication.”

Given it took an entire year to handle this hot potato at the USPTO, it’s hard to imagine a “rare” withdrawal of approval will occur at this point, but with this case, I suppose anything is possible.

A better question, it seems to me is: Does Chick-fil-A have the stomach to fight in public over this one, or will the social media shame-wagon cause it to chicken out (again)?

Chick-fil-A’s objection to Moore’s Eat More Kale tagline is not new, going all the way back to 2006, according to the New York Times, but public encouragement for Moore’s defiance dates back to at least 2011, around the time when the New York Times covered the story. Moore’s Kickstarter funding project for a documentary to expose Chick-fil-A’s enforcement as trademark bullying has raised almost $90,000.00 to date.

How much more is likely to be raised if Chick-fil-A files a formal Notice of Opposition?

As much as I’d like to continue to write about and eventually see a full-length documentary on this dispute, if I were Chick-fil-A, I’d let it go, without even a cluck — Eat More Kale that is — and leave Bo to fund a much shorter film instead.

What would you do if you were Chick-fil-A, besides not start this mess in the first place?

To our PR friends, how would you advise Chick-fil-A, now that it appears the opposition window at the USPTO will be open soon?

And, please don’t recycle this previous Chick-fil-A statement: “We must legally protect and defend our ‘Eat mor chikin’ trademarks in order to maintain rights to the slogan.”

Yes, Chick-fil-A, you have enforceable rights in EAT MOR CHIKIN, but you don’t need to pursue EAT MORE KALE to maintain rights to EAT MOR CHIKIN. Yes, that is a period.

UPDATE: October 14, 2014 is the currently scheduled date of publication for opposition, so stay tuned.

As you will recall, we have followed pretty closely Chick-fil-A’s “Eat Mor Chikin” trademark claims against Vermonter Bo Muller-Moore and his “Eat More Kale” trademark:

Although I initially indicated we’d save a postage stamp and not submit a Freedom of Information Act request for a copy of the successful Letter of Protest to confirm the protestor’s identity (as there was little doubt that it was submitted by Chick-fil-A), on second thought, our curiosity about the contents of the submission got the better of us, so here are pdf links to the Chick-fil-A Letter of Protest submission that we obtained from the USPTO, enjoy:

What do you think, does Chick-fil-A’s Letter of Protest meet the USPTO’s requirements for an ex parte Letter of Protest? I have questions about the highly argumentative nature of the submission, which is supposed to be focused on simply providing appropriate evidence that may support refusal of registration. I question the ex parte attempt to prove fame. I also question the ex parte listing (without underlying support) of thirty-one former third-party marks containing EAT MORE, whose owners/users “agreed to cease and permanently desist their use of, and in several instances have withdrawn federal application to register, the marks . . . .”

Frankly, this kind of evidence seems more appropriate for an inter partes opposition proceeding.

And, from a more technical and procedural perspective, the Chick-fil-A submission totaled 85 pages (5 page Letter of Protest and 80 pages of evidence), so it appears the USPTO waived the following requirements found in TMEP 1715.04:

“A separate itemized index must accompany any submission of evidence exceeding 75 pages or the letter of protest may not be considered. Moreover, the Office encourages the use of an index in all letters of protests that contain multiple forms of evidence as its aids in the consideration of the details of all the evidence provided by the protestor. The index must be provided on plain paper (not letterhead) and contain a concise factual description of each category or form of evidence included. To maintain the integrity of the ex parte examination process, the index should not identify the protestor or its representatives or contain any arguments or persuasive language.”

Stay tuned because Bo Muller-Moore has until September 27, 2012 to respond to the USPTO’s Office Action and registration refusal based on the three Eat Mor Chikin trademark registrations.

Eating more isn’t necessarily a bad thing. Yeah, I saw the documentary Super Size Me; admittedly, I haven’t viewed certain fast food the same way since, but it all depends on what it is you’re eating, right? Common sense dictates that if it’s good for us, we should eat more of it. Indeed, Lexi Petronis of Glamour writes this about the 2010 U.S. Dietary Guidelines“In fact, several of the guidelines tell us to eat more–more dairy, more seafood, more fruits and veggies.WebMD adds a few items to their own “eat more” listing as well:

 

  

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Now, when a specialty fast food restaurant chain and trademark owner adopts a tagline that includes such a basic and competitively necessary message as “eat more” — of the core food it sells — at least these trademark questions necessarily arise: is the tagline even distinctive (does it point to a single source) and, if so, how strong and broad can the rights be? I’d also add, is dilution-style fame even a possibility for such a tagline? 

As you know, we’ve been monitoring, scrutinizing, and breaking news on Chick-fil-A’s efforts to prevent federal registration of Robert “Bo” Muller-Moore’s “Eat More Kale” tagline and trademark, based on Chick-fil-A’s “Eat Mor Chikin” tagline and trademarks — still no federal district court lawsuit, as far as we know. And, as you will recall, I’ve expressed some serious doubts about Chick-fil-A’s claim of likely confusion between the “Eat Mor Chikin” and “Eat More Kale” taglines and marks.

To me, what makes Chick-fil-A’s tagline distinctive is not the words alone, but the seriously mispelled words in the black-ink dripping style, along with the conniving cows who are determined to have fast food customers eat more chicken, and less beef. Had Chick-fil-A adopted a properly spelled tagline “Eat More Chicken” without these unique elements, it is hard for me to imagine the USPTO would have registered it without a serious showing of acquired distinctiveness, and that seems highly unlikely. It would have been like Wendy’s trying to own “Eat More Beef” as opposed to the vastly more creative and distinctive “Where’s the Beef?” tagline.

Nevertheless, the USPTO Examining Attorney assigned to Muller-Moore’s “Eat More Kale” trademark application has now reversed herself (hat tip to Corsearch’s Trademarks + Brands Blog), on the talons of of a successful Letter of Protest (by the way, Geri Haight of Mintz Levin recently did a nice write-up on trademark Letters of Protest), presumably filed by Chick-fil-A, and the USPTO now appears devoted to according the tagline an enormous scope of rights, almost treating it as if Chick-fil-A’s mark were “Eat More” and not the narrower “Eat Mor Chikin”.

So, I must ask, should yours truly eat more crow or humble pie for calling Chick fil A’s trademark allegations regarding “Eat More Kale” baseless?

Or, will counsel for “Bo” be able to overcome the registration refusal for the distinct pleasure and certainty of litigating at the TTAB and having the mark formally opposed by Chick-fil-A?

And what do you make of these additional “eat more” examples? Don’t they make a claim of dilution-style fame difficult?

 

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?