Happy Holidays 12/21/2011
Wishing everyone a joyful holiday season and a Happy New Year! May your next year be even more successful and filled with great achievements. Neha Jaiswal.
In a difficult economic environment, the U.S. economy is very dependent on small businesses. Mom and Pop shops are usually the first to resume hiring and stimulate the local economy. Corporate bullying, however, can stifle the small business sector, especially when it comes to IP protection. Recently, a small T-shirt business in Vermont came under fire of Chick-fil-A attorneys for seeking trademark protection for its business slogan. Bo Muller-Moore, the owner of the business, silk-prints his tees with the slogan “eat more kale” as a tribute to local farmers and Vermont’s agriculture. Chick-fil-A was aware of Muller-Moore’s T-shirt slogan in 2006 but turned a blind eye until Muller-Moore filed for trademark protection.
In August, Chick-fil-A sent Muller-Moore a cease and desist letter ordering him to stop using the phrase “eat more kale,” because it could be confused with Chick-fil-A's trademarked term “eat mor chikin”. Chick-fil-A argues that the “kale” slogan causes “confusion of the public and dilutes the distinctiveness of Chick-fil-A’s intellectual property and diminishes its value.”
Chick-fil-A claims that since it has been using its mark for 16 years, it has a legal claim over that mark and similar marks. However, claims of confusion of the public and trademark dilution will be difficult to prove in court.
In Polaroid Corp. v. Polarad Elecs. Corp., the court set out eight factors to find likelihood of confusion: (1) the strength of the infringing mark, (2) the degree of similarity between the two marks, (3) the proximity of the products, (4) the likelihood that the prior owner will bridge the gap, (5) actual confusion, (6) the reciprocal of defendant's good faith in adopting its own mark, (7) the quality of defendant's product, and (8) the sophistication of the buyers.”
Using the eight factors the public argument is weak because Muller-Moore has been using his mark for more than ten years, there is very little similarity between the marks, kale and chicken are not closely related to each other, and the public is not likely to confuse kale t-shirts and chicken sandwiches. It will be challenging for Chick-fil-A to argue that the public may get kale t-shirts instead of chicken sandwiches because of the confusion that “eat more kale” slogan creates.
Further, the trademark dilution argument will most likely fail under “famous” mark analysis of the Federal Trademark Dilution Act (FTDA). Chick-fil-A will have to prove that its mark is not only famous but also that Muller-Moore’s slogan causes a “blurring” of the Chick-fil-A mark. The FTDA protects only “famous” marks against dilution and a court may find a mark famous based on a number of factors including duration and extent of the mark, the duration and extent of the advertising of the mark and the degree of distinctiveness of the mark. For blurring Chick-fil-A will have to show that in consumers’ minds the connection between chicken sandwiches and Chick-fil-A slogan is weakened.
Moreover, Muller-Moore can raise an affirmative fair use defense to the dilution claim and argue that he used the slogan intentionally as a parody.
A recent case which addresses dilution please read Starbucks v Wolfe Borough.
Despite receiving cease and desist letters from Chick-fil-A, Muller-Moore has not backed down and has proceeded with filing for trademark protection. In fact, his business is booming because of the attention this debate has garnered. It will be interesting how this corporate version of David versus Goliath turns out. If Muller-Moore gets his slogan trademarked, Chick-fil-A will likely file a trademark infringement suit against Muller-Moore.
It is refreshing to see a small business take a stand against a corporation and have both local and national support. Getting IP protection is valuable for a small business, be it in the form of trademark, copyright or patent. Moore-Mueller is an excellent example of a small business who is not afraid to exercise the IP rights available to them.
Read more on how to file a trademark for a small business