6 ms·

‘Eat More Kale’ Company Is Losing Against Chick-Fil-A in Trademark Battle

43 points by MarlonPro 14y ago

bluedino 14y ago
This would be equivalent to "Where's the chicken?" (Wendy's "Where's the beef?"), right? Couldn't it just be classified as a parody? It seems silly to not allow them to use something because it's similar.
- rayiner 14y ago
  See: http://www.lfiplaw.com/articles/trademark_parody.htm http://www.lfiplaw.com/articles/trademark_parody.htm
ars 14y ago
Is it really possible to trademark a sentence where the plain meaning of the sentence is something that people would ordinarily say?
- mpyne 14y ago
  "Just Do It" is only one example of many that prove it is indeed possible.
- bigtech 14y ago
  Interesting question -- googled this which answers it pretty well: Additionally, unless the slogan is in itself inherently distinctive and qualifies as a mark in itself, the USPTO requires that the slogan be identified with the product or service so that the consuming public, upon hearing the slogan, relates it to the particular product or service. This requirement means that the slogan has developed what the law refers to as a “secondary meaning.” The best examples of this type of slogan are “Just Do It” (Nike) and “Finger Lickin’ Good (KFC).
- deleted 14y ago
  [deleted]
- rayiner 14y ago
  Yes, but such trademarks are necessarily harder to defend because you have to show that consumers associate the term with a specific brand, not just the meaning of the words. This case is pretty easy, though, because nobody would use "Eat More Kale" as a marketing slogan unless it was an intentional play on Chick-fil-A's popular and widespread "Eat Mor Chikin" campaign.
  - mjmahone17 14y ago
    But isn't satire considered a non-infringing use?
    - rayiner 14y ago
      Parody is a non-infringing use, but this seems more like playing on the popularity of Chick Fil-A's slogan than parodying it. Successful parody cases (where the use was found non-infringing) have been things like "South Butt" (versus North Face) and "Chewy Vuiton" (for dog toys).
  - pessimizer 14y ago
    >because nobody would use "Eat More Kale" as a marketing slogan unless it was an intentional play on Chick-fil-A's popular and widespread "Eat Mor Chikin" campaign. This is not true.
  - ScottBurson 14y ago
    "Popular and widespread"? In some parts of the country, perhaps. I wasn't aware of it, and according to the article, Muller-Moore had never heard of Chick-fil-A until the company contacted him. It's entirely possible that Chick-fil-A has little or no presence in Vermont.
- anigbrowl 14y ago
  Yes, but you have to work at it. If I apply for a trademark on the phrase 'what's going on' I'll get nowhere. But supposing I have a website or magazine that provides listings of interesting local events (ie 'what's going on' in your area) and I work hard at developing that brand and building an association with my service, then my chances are much better.
dromidas 14y ago
I had no idea that Chick-Fil-A had a slogan, let alone that it was that retarded. "Eet Moar Chikin" or something like that? What the hell. How is "Eat More Kale" even similar? One is clearly serious (Kale) and the other is clearly trying to sound like ICanHazCheezeburger (Chick-fil-A).
- majormajor 14y ago
  FWIW (though not particularly relevant to the case), the Chick-Fil-A slogan is from a (very successful) advertising campaign that goes back to the mid-90s. It's definitely not trying to imitate internet memes. But I'm very surprised that, given the integral nature of the misspellings (the cows did not get a great education) in the Chick-Fil-A version, this could be seen as infringing.
- bcrescimanno 14y ago
  The "Eat Mor Chikin" campaign (and the cows) long pre-date anything to do with ICanHazCheezeburger. I remember driving on the highways in Atlanta in the late 1990s seeing the billboards everywhere and always commenting to my girlfriend at the time, "wow, that campaign is really played out at this point!" I don't remember when, specifically, that it started--but I do remember it was the early-to-mid-90s.
- mynameishere 14y ago
  I can't fathom why anyone would buy a shirt with a slogan as stupid as "Eat More Kale" unless there was an understood vegetarian contrast to the "Eet Moar Chikin" slogan, which is in fact very well-known.
  - graeme 14y ago
    Kale is popular outside of vegetarian circles. Paleo dieters love it too. A friend who lives in my neighborhood commented that they've seen three 'I love Kale' bumper stickers. It's quite a popular vegetable these days, especially among those too young to remember the 'eet moar chikin' campaign.
- rayiner 14y ago
jack-r-abbit 14y ago
I seem to recall the milk industry getting their panties in a wad over the up tic in "Got <thing>?" usage. I don't see that going away so perhaps the milk industry lost that battle? This seems the same to me.
ubersync 14y ago
Looks like Chick-fil-A love getting into controversies. Remember that whole anti-gay thing?
- deleted 14y ago
  [deleted]
mistercow 14y ago
What's so preposterous to me is that Chick-Fil-A's entire "cows doing things poorly" advertising campaign is basically a rip-off of Gary Larson. Not in any legal sense, of course, but in an intellectual honesty sense.
xenophanes 14y ago
> Chick-fil-A tried to stop him after first finding out about the sales in 2006 but then gave up the fight. >That is, until Muller-Moore filed for trademark protection in early 2011. well that's pretty different than it sounded like based on reading the other HN comments. they aren't going after him for using the phrase (they did try that in the past, but gave up), but for trying to trademark it!
- DannyBee 14y ago
  They aren't going after him, just probably opposing the registration in front of the PTO. If you are a party who may be damaged by issuance, you can challenge the registration before it issues. EDIT: Actually, looking closer they aren't even opposing, the PTO issued the rejection directly, without any involvment from chick-fil-a at all. It never even made it to the opposition stage. http://tsdr.uspto.gov/#caseNumber=85412053&caseType=SERIAL_NO&searchType=statusSearch http://tsdr.uspto.gov/#caseNumber=85412053&caseType=SERI... There are no filings or documents from chick-fil-a in here at all. The examiner apparently came up with the rejection reason on their own (any communications chick-fil-a had by phone with the examiner would have been on record and here as well) It's even been through two examiners now. That said, the current examiner's arguments seem like complete and total BS. Double edit: I take it back, it looks like one of these actually is a notice of a letter of protest (december 22nd, 2011), which functions much like an opposition. However, only the outgoing notice that a letter of protest is filed is there, the actual letter of protest (received, december 2011), presumably from chick-fil-a, is for some reason, not in the documents. Sorry, i'm much more used to reading patent dockets than trademark ones :)
  - majormajor 14y ago
    The article says that they re-contacted him directly to try to get him to stop using it after he filed for protection: "In October 2011 Chick-fil-A sent a letter to Muller-Moore stating that he had to stop using the phrase because it may be confused with the company’s. They also told him to stop using his website, eatmorekale.com." Which, given that they'd stopped after 2006, does make it look rather like a don't-poke-the-bear thing regarding his own filing for trademark protection after Chick-Fil-A had initially dropped it.
eurleif 14y ago
Here's an "eat more corn, oats, ..." poster from WWI: http://www.archives.gov/education/lessons/sow-seeds/ http://www.archives.gov/education/lessons/sow-seeds/ I wonder if that's good for anything.
- lancefisher 14y ago
  IANAL, but trademark are different than patents. If this were a patent issue that poster could be prior art. However, Chick-fil-A does have a trademark on "Eat mor chickin", and that's what matters. In fact if there had been a trademark on "eat more corn, oats, and rye" which I highly doubt there was, it has likely fallen out of use. You can trademark old marks that have not been in use for a while. I met a local trademark attorney that did just this with an old beer brand, that he is now selling a craft beer under.
  - eurleif 14y ago
    But perhaps the prior use could help to demonstrate that "eat more ..." is just a generic statement, and so the "eat mor chikin" trademark shouldn't be applied so broadly?
    - mpyne 14y ago
      You can trademark generic statements as well, as long as it remains notable within the business field.
      - eurleif 14y ago
        But the trademark is on "eat mor chikin", not "eat more". IANAL, but the article gave me the impression that the USPTO has some discretion in determining how much similarity makes a violation.
        mpyne 14y ago
        Yes, that's just it, it's practically all subjective. You don't have to copy every word for it to be a trademark infringement either. Personally I think he was lucky to have gotten Chik-Fil-A off of his back in 2006 because the slogan similarities are stunning, but then again I've actually seen Chik-Fil-A advertising for years before this.
radicalbyte 14y ago
Since living in Holland I've started eating a lot more Kale. The boil it and mix it with mashed potatoes, served with smoked sausage and bacon bits. With good quality hand made smoked sausage it's one of my favourite meals. For anyone interested: http://recipes.sparkpeople.com/recipe-detail.asp?recipe=202341 http://recipes.sparkpeople.com/recipe-detail.asp?recipe=2023...
- tripzilch 14y ago
  Totally recommended. My favourite potato-hash style dish. I usually skip the sausage though, I don't like the cheap processed ones (though they are most "traditional"), which is what you usually get (except when I'm the cook), so I just add more bacon :) And next you're having boerenkool with some IT types, tell them how UNOX is the worst operating system.
  - radicalbyte 14y ago
    Hahaha, nice one. I live in Gelderland, close to a butcher who smokes the proper sausages. For Americans - the difference is the same as between the processed cheese you get on a burger and real cheese..
pessimizer 14y ago
The only reason that he filed for a trademark was to keep other people from printing "Eat More Kale" on t-shirts. He's the IP bully at this point. Chick-Fil-A gave up on trying to bully him in 2006.
- jarrett 14y ago
  According to the article (though I haven't verified this), there are sellers on eBay using "the exact same logo." That does sound like it might be unethical. Assuming the copying is as audacious as the article suggests, I wouldn't characterize the original creator as a bully. Regardless of the status of the trademark application, I'd also be curious as to whether a copyright claim could have legs. If a t-shirt design is copied verbatim, you might not need trademark protection; copyright could be sufficient.

43 points by MarlonPro 14y ago

This would be equivalent to "Where's the chicken?" (Wendy's "Where's the beef?"), right? Couldn't it just be classified as a parody? It seems silly to not allow them to use something because it's similar.

rayiner 14y ago
See: http://www.lfiplaw.com/articles/trademark_parody.htm http://www.lfiplaw.com/articles/trademark_parody.htm

ars 14y ago

Is it really possible to trademark a sentence where the plain meaning of the sentence is something that people would ordinarily say?

mpyne 14y ago
"Just Do It" is only one example of many that prove it is indeed possible.
bigtech 14y ago
Interesting question -- googled this which answers it pretty well: Additionally, unless the slogan is in itself inherently distinctive and qualifies as a mark in itself, the USPTO requires that the slogan be identified with the product or service so that the consuming public, upon hearing the slogan, relates it to the particular product or service. This requirement means that the slogan has developed what the law refers to as a “secondary meaning.” The best examples of this type of slogan are “Just Do It” (Nike) and “Finger Lickin’ Good (KFC).
deleted 14y ago
[deleted]
rayiner 14y ago
Yes, but such trademarks are necessarily harder to defend because you have to show that consumers associate the term with a specific brand, not just the meaning of the words. This case is pretty easy, though, because nobody would use "Eat More Kale" as a marketing slogan unless it was an intentional play on Chick-fil-A's popular and widespread "Eat Mor Chikin" campaign.
- mjmahone17 14y ago
  But isn't satire considered a non-infringing use?
  - rayiner 14y ago
    Parody is a non-infringing use, but this seems more like playing on the popularity of Chick Fil-A's slogan than parodying it. Successful parody cases (where the use was found non-infringing) have been things like "South Butt" (versus North Face) and "Chewy Vuiton" (for dog toys).
- pessimizer 14y ago
  >because nobody would use "Eat More Kale" as a marketing slogan unless it was an intentional play on Chick-fil-A's popular and widespread "Eat Mor Chikin" campaign. This is not true.
- ScottBurson 14y ago
  "Popular and widespread"? In some parts of the country, perhaps. I wasn't aware of it, and according to the article, Muller-Moore had never heard of Chick-fil-A until the company contacted him. It's entirely possible that Chick-fil-A has little or no presence in Vermont.
anigbrowl 14y ago
Yes, but you have to work at it. If I apply for a trademark on the phrase 'what's going on' I'll get nowhere. But supposing I have a website or magazine that provides listings of interesting local events (ie 'what's going on' in your area) and I work hard at developing that brand and building an association with my service, then my chances are much better.

dromidas 14y ago

I had no idea that Chick-Fil-A had a slogan, let alone that it was that retarded. "Eet Moar Chikin" or something like that? What the hell. How is "Eat More Kale" even similar? One is clearly serious (Kale) and the other is clearly trying to sound like ICanHazCheezeburger (Chick-fil-A).

majormajor 14y ago
FWIW (though not particularly relevant to the case), the Chick-Fil-A slogan is from a (very successful) advertising campaign that goes back to the mid-90s. It's definitely not trying to imitate internet memes. But I'm very surprised that, given the integral nature of the misspellings (the cows did not get a great education) in the Chick-Fil-A version, this could be seen as infringing.
bcrescimanno 14y ago
The "Eat Mor Chikin" campaign (and the cows) long pre-date anything to do with ICanHazCheezeburger. I remember driving on the highways in Atlanta in the late 1990s seeing the billboards everywhere and always commenting to my girlfriend at the time, "wow, that campaign is really played out at this point!" I don't remember when, specifically, that it started--but I do remember it was the early-to-mid-90s.
mynameishere 14y ago
I can't fathom why anyone would buy a shirt with a slogan as stupid as "Eat More Kale" unless there was an understood vegetarian contrast to the "Eet Moar Chikin" slogan, which is in fact very well-known.
- graeme 14y ago
  Kale is popular outside of vegetarian circles. Paleo dieters love it too. A friend who lives in my neighborhood commented that they've seen three 'I love Kale' bumper stickers. It's quite a popular vegetable these days, especially among those too young to remember the 'eet moar chikin' campaign.
rayiner 14y ago

jack-r-abbit 14y ago

I seem to recall the milk industry getting their panties in a wad over the up tic in "Got <thing>?" usage. I don't see that going away so perhaps the milk industry lost that battle? This seems the same to me.

ubersync 14y ago

Looks like Chick-fil-A love getting into controversies. Remember that whole anti-gay thing?

deleted 14y ago
[deleted]

mistercow 14y ago

What's so preposterous to me is that Chick-Fil-A's entire "cows doing things poorly" advertising campaign is basically a rip-off of Gary Larson. Not in any legal sense, of course, but in an intellectual honesty sense.

xenophanes 14y ago

> Chick-fil-A tried to stop him after first finding out about the sales in 2006 but then gave up the fight. >That is, until Muller-Moore filed for trademark protection in early 2011. well that's pretty different than it sounded like based on reading the other HN comments. they aren't going after him for using the phrase (they did try that in the past, but gave up), but for trying to trademark it!

DannyBee 14y ago
They aren't going after him, just probably opposing the registration in front of the PTO. If you are a party who may be damaged by issuance, you can challenge the registration before it issues. EDIT: Actually, looking closer they aren't even opposing, the PTO issued the rejection directly, without any involvment from chick-fil-a at all. It never even made it to the opposition stage. http://tsdr.uspto.gov/#caseNumber=85412053&caseType=SERIAL_NO&searchType=statusSearch http://tsdr.uspto.gov/#caseNumber=85412053&caseType=SERI... There are no filings or documents from chick-fil-a in here at all. The examiner apparently came up with the rejection reason on their own (any communications chick-fil-a had by phone with the examiner would have been on record and here as well) It's even been through two examiners now. That said, the current examiner's arguments seem like complete and total BS. Double edit: I take it back, it looks like one of these actually is a notice of a letter of protest (december 22nd, 2011), which functions much like an opposition. However, only the outgoing notice that a letter of protest is filed is there, the actual letter of protest (received, december 2011), presumably from chick-fil-a, is for some reason, not in the documents. Sorry, i'm much more used to reading patent dockets than trademark ones :)
- majormajor 14y ago
  The article says that they re-contacted him directly to try to get him to stop using it after he filed for protection: "In October 2011 Chick-fil-A sent a letter to Muller-Moore stating that he had to stop using the phrase because it may be confused with the company’s. They also told him to stop using his website, eatmorekale.com." Which, given that they'd stopped after 2006, does make it look rather like a don't-poke-the-bear thing regarding his own filing for trademark protection after Chick-Fil-A had initially dropped it.

eurleif 14y ago

Here's an "eat more corn, oats, ..." poster from WWI: http://www.archives.gov/education/lessons/sow-seeds/ http://www.archives.gov/education/lessons/sow-seeds/ I wonder if that's good for anything.

lancefisher 14y ago
IANAL, but trademark are different than patents. If this were a patent issue that poster could be prior art. However, Chick-fil-A does have a trademark on "Eat mor chickin", and that's what matters. In fact if there had been a trademark on "eat more corn, oats, and rye" which I highly doubt there was, it has likely fallen out of use. You can trademark old marks that have not been in use for a while. I met a local trademark attorney that did just this with an old beer brand, that he is now selling a craft beer under.
- eurleif 14y ago
  But perhaps the prior use could help to demonstrate that "eat more ..." is just a generic statement, and so the "eat mor chikin" trademark shouldn't be applied so broadly?
  - mpyne 14y ago
    You can trademark generic statements as well, as long as it remains notable within the business field.
    - eurleif 14y ago
      But the trademark is on "eat mor chikin", not "eat more". IANAL, but the article gave me the impression that the USPTO has some discretion in determining how much similarity makes a violation.
      - mpyne 14y ago
        Yes, that's just it, it's practically all subjective. You don't have to copy every word for it to be a trademark infringement either. Personally I think he was lucky to have gotten Chik-Fil-A off of his back in 2006 because the slogan similarities are stunning, but then again I've actually seen Chik-Fil-A advertising for years before this.

radicalbyte 14y ago

Since living in Holland I've started eating a lot more Kale. The boil it and mix it with mashed potatoes, served with smoked sausage and bacon bits. With good quality hand made smoked sausage it's one of my favourite meals. For anyone interested: http://recipes.sparkpeople.com/recipe-detail.asp?recipe=202341 http://recipes.sparkpeople.com/recipe-detail.asp?recipe=2023...

tripzilch 14y ago
Totally recommended. My favourite potato-hash style dish. I usually skip the sausage though, I don't like the cheap processed ones (though they are most "traditional"), which is what you usually get (except when I'm the cook), so I just add more bacon :) And next you're having boerenkool with some IT types, tell them how UNOX is the worst operating system.
- radicalbyte 14y ago
  Hahaha, nice one. I live in Gelderland, close to a butcher who smokes the proper sausages. For Americans - the difference is the same as between the processed cheese you get on a burger and real cheese..

pessimizer 14y ago

The only reason that he filed for a trademark was to keep other people from printing "Eat More Kale" on t-shirts. He's the IP bully at this point. Chick-Fil-A gave up on trying to bully him in 2006.

jarrett 14y ago
According to the article (though I haven't verified this), there are sellers on eBay using "the exact same logo." That does sound like it might be unethical. Assuming the copying is as audacious as the article suggests, I wouldn't characterize the original creator as a bully. Regardless of the status of the trademark application, I'd also be curious as to whether a copyright claim could have legs. If a t-shirt design is copied verbatim, you might not need trademark protection; copyright could be sufficient.