Chick-fil-A is the second largest chicken restaurant chain in the United States. Its most successful print and television marketing campaign involves a bunch of cows engaging in desperate and hilarious antics in an effort to convert beef lovers into chicken fans. For the past 16 years, Chick-fil-A has been using the tagline EAT MOR CHIKIN as a prominent part of these advertisements and, in fact, the EAT MOR CHIKIN campaign has won numerous industry awards for creativity and effectiveness. If you are not repelled by the thought of consuming a crispy fried chicken sandwich and have not pledged allegiance to the King of Meats (beef), check out Chick-fil-A’s website to learn more about the history of the EAT MOR CHIKIN cows and to watch some of the more recent commercials.
Of course, you’re probably not shocked to learn that Chick-fil-A has taken the proper steps to protect its well-known EAT MOR CHIKIN trademark. A quick search of the Trademark Office’s records indicates that Chick-fil-A is the owner of at least six active federal trademark registrations for EAT MOR CHIKIN. The oldest of these registrations dates back to 1996 and is for “restaurant services.” Another trademark registration for EAT MOR CHIKIN followed a year later for “clothing, namely, t-shirts and sweatshirts.” Now, if you’ve been following my blog or reading up on trademark law in your spare time, you already know that these incontestable trademark registrations give Chick-fil-A the exclusive nationwide right to use its trademarks in connection with its products and services, as well as the right to exclude others from using a confusingly similar trademark for identical or related products and services.
So, according to an Associated Press article published on November 28, a Vermont folk artist by the name of Bo Muller-Moore has been printing the phrase EAT MORE KALE on shirts and stickers since 2000. His website indicates that his products are all about promoting healthy eating and supporting small local food producers. Apparently, about five years ago, Chick-fil-A sent Muller-Moore a cease and desist notice demanding that he stop printing and selling products with the EAT MORE KALE name on them. The article states that Muller-Moore’s attorney traded a few letters with Chick-fil-A and that was it. Never heard from Chick-fil-A again. Well, up until now. About a month after Muller-Moore filed a trademark application seeking to register EAT MORE KALE, he received a letter from Chick-fil-A ordering him to stop using the phrase and to transfer his domain name (eatmorekale.com) to Chick-fil-A.
Really Chick-fil-A? This is how you want to portray yourself? Going after some guy who’s not even in the restaurant business and who’s operating a small screen-printing business out of his garage in the middle of Vermont? Not cool, especially considering that there’s a real question as to whether Muller-Moore is even using EAT MORE KALE as a trademark. That’s right. Just splashing EAT MORE KALE on the front of a t-shirt does not make it a trademark. That type of use is called “ornamental” use because people aren’t necessarily purchasing the shirt because is comes from Muller-Moore or because they care that Muller-Moore produced the shirt. Rather, people are buying the shirt because they simply like the EAT MORE KALE phrase and what it connotes. In other words, consumers don’t perceive EAT MORE KALE as a clothing brand like they do NIKE or GAP. In reviewing Muller-Moore’s trademark application and the specimens of use Muller-Moore submitted, I am confident that the Trademark Office will preliminarily reject his application on the basis that EAT MORE KALE does not function as a trademark.
If I was in charge of making the legal decisions at Chick-fil-A (which I would only do if promised free food as part of my compensation package), I would have (1) looked back in my records to see if Chick-fil-A had ever sent Muller-Moore a cease and desist notice, (2) directed my attorneys to monitor the progress and status of the EAT MORE KALE application, and (3) not sent any correspondence to Muller-Moore unless the application was approved by the Trademark Office and published for opposition. In the event the Chick-fil-A trademark application is published for opposition, Chick-fil-A could file a 90 day extension of time to oppose the application and then use that time to communicate its concerns to Muller-Moore in a professional manner and to work toward reaching an amicable resolution. Instead, Chick-fil-A decided to be unnecessarily aggressive and to make outrageous demands of Muller-Moore that Chick-fil-A should have known could end up as part of an Associated Press news story that’s now been distributed through hundreds of news outlets. Idiotic? You make the call.
By the way, this is the same company that prides itself on requiring that all of its restaurants be closed on Sundays so that employees and franchise operators can spend time with their loved ones and to worship if they want to. So, I guess it’s OK to be a trademark bully six days of the week so long as you take Sunday off. As a fan of Chick-fil-A, I find its actions against Muller-Moore disappointing and in contradiction of the values it portrays to the public. But, don’t get me wrong, I still strongly believe that we should all EAT MOR CHIKIN…….at KFC.