Posted: December 23, 2011
Who confuses kale with chicken?Kurt Leyendecker
The Internet has been a boon for trademark litigators. Using Google, the United States Patent and Trademark Office website and using various other third-party sites, company owners, executives and legal counsel can easily search and find other companies using marks similar to those they call their own. And once they find those dirty rotten trademark infringers, these companies have a duty: They must enforce their marks or risk losing them. Next stop, your friendly neighbourhood trademark litigator to put an end to the intellectual property abuse.
A recent example of this phenomenon pits the fast food giant Chick-Fil-A against a Vermont artist. The artist's crime: selling t-shirts with the words EAT MORE KALE emblazoned on the front. Ten years or so after the artist began someone at Chick-Fil-A became aware and decided that the t-shirt proclamation in favor of leafy greens was just too similar to its own popular mark, EAT MOR CHIKIN. Now aware of the dastardly acts, Chick-Fil-A's attorneys jumped into action with a cease-and-desist letter including the threat of an expensive litigation.
Frankly, in my legal opinion, if Chick-Fil-A were to litigate, it wouldn't stand a chance in hell on the merits, and I would bet a lot of buckets of maple syrup on that. However, in a trademark dispute, victory isn't about who is legally right or wrong: It is about who is bigger and who has deeper pockets. Most disputes never make it to trial. The disputes settle and this occurs when the smaller guy realizes that it can't afford the fight against a trademark bully, and that the lost name recognition, brand presence and goodwill are worth less than the financial and emotional cost of the litigation.
Wanton trademark bullying isn't necessarily all roses for the big guy. People tend to get annoyed with giant corporations that try to harass the little guy especially when the action seems to fly in the face of good old common sense. Does anyone really believe that people who see someone wearing an EAT MORE KALE t-shirt are going to be confused that the shirt is being sourced from Chick-Fil-A or that these shirts will somehow dilute Chick-Fil-A's brand? In response to the heavy-handed action, people are flocking to buy the EAT MORE KALE t-shirts, and others are leaving posts on the Chick-Fil-A Facebook page threatening to stop eating at the restaurant if it doesn't stop its harassment.
We have seen this kind of bad behavior locally. We represented a real estate agent who had the domain myhighlandsranch.com. He received a cease-and-desist from Shea Homes, the covenant-controlled community's master developer. Our client took the issue to the press, and in the end, Shea suffered a black eye during the Ranch's year-long silver anniversary celebration. Incidentally and somewhat uncharacteristically, we were able to work a settlement in which the agent was able to keep his domain.
So the moral of the story is twofold: If you are a small guy, think long and hard before you choose a trademark that is even remotely similar to one being used by a much larger company, even if your use is not directly related to the big guy's use of the similar mark. You may be in the right legally, but is the risk of a six-figure lawsuit and/or the potential loss of your hard earned goodwill down the line worth it? A good clearance search before rolling out a new trademark is almost always advisable to help find a clean trademark.
If you are the big guy, sure you can likely win a suit against the small guy just on sheer financial wherewithal. But is the risk of being branded a trademark bully and suffering a public relations black eye worth it? There are often less damaging alternatives available, such as a consent agreement that allows the small guy to continue its use but limits any future expansion of the use.
Also, perhaps you should consider whether the small guy's use could actually be turned to your advantage. Case in point: Lucas Films has a problem with Star Wars aficionados making non-commercial fan films and infringing the brand. The company embraced the fan film phenomenon by creating an annual award for the best. This endeared the company to the Star Wars fans while at the same time gave Lucas Films through the contest rules a means to police their trademarks.
Kurt Leyendecker is a founding member of the intellectual property law boutique, Leyendecker & Lemire. Leyendecker & Lemire specialize in patents, trademarks and related complex civil litigation. Kurt Leyendecker can be reached directly at 303.768.0123 or firstname.lastname@example.org. Visit www.coloradoiplaw.comfor further information, including Leyendecker & Lemire’s weekly blog, “Control, Protect & Leverage.”