Corporate Trademark Bullying: Smaller Businesses Challenge Larger Corporations in Trademark Disputes

Corporate Trademark Bullying: Smaller Businesses Challenge Larger Corporations in Trademark DisputesThe term “corporate trademark bullying” has been coined for instances when a large corporation challenges a smaller business’s use of a particular trademark, and the smaller entity, wanting to avoid the expensive legal fees that can arise from a formal trademark dispute, abandons its mark and refrains from further use. Recently, two small businesses have each made headlines as a result of their refusal to cower to this “corporate trademark bullying.” Vermont artist Bo Muller-Moore refused to withdraw his trademark application for the mark “eat more kale” despite fast-food restaurant Chick-fil-A’s cease and desist letters. Indiana beauty salon owner Chanel Jones tried to ignore Chanel, Inc.’s (“Chanel”) attempts to force her to change the name of her shop formerly titled “Chanel’s Salon.” Ultimately, Muller-Moore was successful in his plight while Jones and her salon suffered a different fate.

In 2000, Muller-Moore was asked by a friend, a local kale farmer, to create t-shirts displaying the phrase “eat more kale” to sell to family and friends as a way to encourage sales of the leafy vegetable. As the “eat more kale” t-shirts became increasingly popular, Muller-Moore added “eat more kale” bumper stickers to his repertoire and silk-screened the slogan onto other articles of clothing. Sales increased from a few dozen a year into the thousands per year.

In 2006, Muller-Moore received his first cease and desist letter from Chick-fil-A, which demanded that he refrain from use of “eat more kale” as it was likely to cause consumer confusion (the standard for trademark infringement) with its “Eat More Chikin” slogan. This meant no more t-shirts, bumper stickers or use of his website for Muller-Moore. Chick-fil-A argued that consumers would be misled into believing that “eat more kale” was associated with Chick-fil-A, as opposed to Muller-Moore. However, Muller-Moore, who ran his small business from a studio over his garage in a small town in Vermont, a state in which there are no Chick-fil-A establishments, was not thwarted by Chick-fil-A’s threats of a lawsuit. In Muller-Moore’s mind, consumers were not going to think that one of his “eat more kale” t-shirts was in any way affiliated with Chick-fil-A, and he continued his business as usual. And Chick-fil-A went away.

Until 2011, that is, when Muller-Moore found himself back on Chik-fil-A’s radar after filing a trademark application with the United States Patent and Trademark Office (USPTO) to federally register the mark “eat more kale.” The corporation subsequently sent him another cease and desist letter, again claiming that “eat more kale” was likely to cause confusion amongst the public as to the source of the mark and, additionally, that it diluted the distinctiveness of Chick-fil-A’s “Eat Mor Chickin” mark. Once again, Muller-Moore ignored Chick-fil-A’s demands and refused to abandon his trademark application.

Initially, a Trademark Examiner at the USPTO did not find that registration of “eat more kale” would cause a likelihood of confusion with any other previously registered trademarks. However, this finding changed once the USPTO received an ex parte Letter of Protest, submitted anonymously, requesting a determination that “eat more kale” would cause consumer confusion with three registered “Eat Mor Chikin” marks, all owned by Chick-fil-A. The Letter of Protest, containing evidence and arguments about why the mark should not be registered, was sent directly to the USPTO where it was up to the Deputy Commissioner to make an independent determination of whether the trademark application should be granted.

Although the Deputy Commissioner initially advised the Trademark Examiner to deny the “eat more kale” mark on the grounds that it could cause a likelihood of confusion with Chick-fil-A’s “Eat Mor Chikin” mark, Muller-Moore, in his response to the denial, successfully argued why that would not be so. He persuaded the Trademark Examiner that there would be no consumer confusion between the sources of the “eat more kale” and “Eat Mor Chikin” slogans. The USPTO granted Muller-Moore’s trademark application on December 9, 2014.

The second instance of “corporate trademark bullying” took place in Merrillville, Indiana at Chanel’s Salon, a salon owned by Chanel Jones. The eponymously named hair salon caught the attention of international fashion industry giant Chanel, known for its high-end couture, fragrances and cosmetic products. On July 24, 2013, Chanel sent Jones its first cease and desist letter requesting that she change the name of her salon to one which does not include “Chanel.” Jones ignored this request, as she did the four letters that followed from the period of August 12, 2013 through September 4, 2014.   Jones’ lack of reply prompted Chanel to file suit for trademark infringement, trademark dilution and unfair competition in the Northern District of Indiana.

Chanel took issue with Jones’ using only the part of her name that exploited “Chanel” mark in connection with goods that are associated with the fashion house’s trademarked brand. This, Chanel argued, would confuse the public as to the source of the services rendered at “Chanel’s Salon” and it would also dilute its world famous trademark. We will never know if the Northern District of Indiana agreed with Chanel or sympathized with Jones because she eventually agreed to change the name of her salon, putting an end to the litigation.

If you have trademark rights that you need to enforce or want to license, a trademark that you would like to register for federal protection with the USPTO, or any other intellectual property concerns, the attorneys at Korngut Paleudis LLC have the knowledge and experience necessary to apprise you of your rights and address your intellectual property and litigation needs. Please contact the firm either through our website or at (212) 949-0138 in New York City, (914) 220-8270 in White Plains, or (203) 355-3635 in Stamford, Connecticut.