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2006 Eat More Kale Response to Chick-fil-A C&D

2006 Eat More Kale Response to Chick-fil-A C&D

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Published by: Eric Goldman on Dec 07, 2011
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TARRANT, GILLIES, MERRIMAN & RICHARDSON

44 E:AST STATE STREET POST OFFICE MONTPELlE:R, GERALD CHARLES DANIEL R, TARRANT BOX 1440

NOV 2 1

2DU

VT 05601-1440 SARAH R, JARVIS

(802) 223-1112
FAX: (802) 223-6225

PAUL S, GILLIES

L MERRIMAN p. RICHARDSON

November 17,2011 AumaN. Reggy, Esq. Arnall Golden Gregory, LLP 171 17th Street NW, Ste. 2100 Atlanta, Georgia 30363-1031 Chick-fil-A, Inc's Trademark Claims Dear Ms. Reggy, Thank you for your October 4, 2011 letter expressing your client's concern about Eat More Kale's trademark filings and agreement to extend our time to respond. Furthermore, I appreciate your extensive notations concerning the lengths and process that your client has pursued against other businesses. That said there are a number of fundamental problems with your client's position that I believe your letter overlooks. No Risk of Confusion First, there is no likelihood of confusion between Chick-fil-A's "Eat Mar Chikin" advertising campaign, which is tied to a single image-cows wearing a hand-painted signs expressing this phonetic phrase as a form of self-preservation. My client's phrase shares only six out of twelve of the same letters as your client's phrase and none ofthe imagery or conceits. My client has no cow designs which appear in conjunction with the phrase "Eat More Kale." The Second Circuit has adopted eight factors for determining whether a name or phrase will cause confusion to an existing trademark. Polaroid Corp. v. Polarad Elces. Corp., 287 F.2d 492, 495 (2d Cir. 1961), None of these factors are triggered by the current situation. Likewise, none of the factors used by the reviewing court for the Trademark Trial and Appeal Board under the In re E.1. DuPont Deblemours & Co., 177 USPQ 563 (CCP A 1973), case implicates a likelihood of confusion problem. The first Polaroid factor and fifth Dul'ont factor is the strength of the mark. This issue is affected by whether or not the mark claimed is a unique or common design. The phrase "Eat More" followed by anything is a common phrase that enjoys no unique designation. What makes your client's mark unique is the combination of a purposeful misspelling, cow imagery, and a central conceit (bovine self-preservation). None of these elements are copied or shared by

AumaN. Reggy, Esq. November 17,2011 Page 2 my client's mark. He simply uses the common phrase Eat More plus the word Kale to express a very different idea. To hold for your client, a court would have to find that it owns the entire universe of "Eat More." This is neither warranted by the nature of the phrase nor by your client's use, which is much more narrow and dependent on context than you are asserting. They are entitled to little if any protection and the context of both marks make the potential for confusion unlikely and at best theoretical. I believe my client would easily prevail on this factor. DuPont factors six and eight provide a further lens through which the question of strength of a mark may be considered, The sixth DuPont factor-the number and nature of similar marks in use on similar goods-provides a presumption that others' use of similar marks weakens a mark. Despite your list of twenty-nine] marks alleged to be challenged and subsequently abandoned, at least twelve other EAT MORE common law marks are in use, along with a plethora of instances of descriptive usage. These other uses demonstrate the weakness of the EAT MOR CHIKIN mark. The eighth DuPont factor-looking to whether a mark is used as a "family" mark-likewise weighs against a finding that EAT MOR CHIKIN is a strong mark in that it is not used as a "family" mark. The second Polaroid factor and the Erst Dul'ont factor concern the degree of similarity between the two marks. The only similarity between the two are the words eat and mor(e). These are common words and together make a common phrase, They share no common spelling, no common lettering, no common imagery, no common conceit, and no common use. The only commonality is a common phrase that can be found by a simple Google search to extend wide and far in use and diversity. Again, there is simply not enough similarity to give rise to confusion concerns. The third Polaroid factor talks about proximity and the second DuPont factor investigates similarity or dissimilarity between the goods/services. There is zero competitive proximity between a chicken-sandwich selling restaurant and one-at-a-time handmade t-shirts and stickers. The third DuPont factor looks to the similarity or dissimilarity of established, likely-tocontinue trade channels, It is highly likely that Chick-Fil-A's established restaurant channels and my client's established Vermont-based homemade t-shirt store will continue. This presents not only a great disparity in the nature of the trade channels, but also a great disparity in the geographic location of those trade channels. Your client operates restaurants in mans and has no locations in Vermont. The closest Chick-fil-A store is in Nashua, New Hampshire, over 120 miles away. My client sells his t-shirts at farmer's markets, in local stores, and on the internet. The fourth Polaroid factor goes to the potential that the prior owner will "bridge the gap" between the two products and occupy the field. Here again, your client is in the business of food service. It is not in the business of selling organic cotton t-shirts at farmers' markets, small stores, and over the internet. To the extent that your client produces clothing with its slogan, it

I While page five of your letter. lists thirty marks, numbers 6 and 25 appear to be duplicative, as EAT MORE BEER has been filed with the PTa only once.

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AumaN. Reggy, Esq. November 17,2011 Page 3 will be secondary and to market and promote the primary product. The gap as it currently exists will not be narrowed, let alone bridged. The fifth Polaroid factor and the seventh and eighth Dul'ont factors look to actual confusion. Your client has engaged in a focused marketing campaign to promote its chicken sandwiches and food products (which do not contain kale). Where the phrase "Eat Mor Chikin" appears it is designed to direct viewers to and promote your client's food products. My client's phrase is a reflection of the Vermont agricultural ethos and reflects a broader, more philosophic point. Aside from this inherent difference, there is the same broad distinction in appearance. My client's purposefully simple lettering and designs will never be mistaken for the sophisticated advertising that Chick-fil-A produces. My client's product is essentially folk-art that is unlikely to be confused with anything else. As a consequence, it is understandable that no instance of actual confusion has been raised by Chick-Fil-A in your letter. It is also understandable that my client has never been made aware of a single instance of actual confusion. As the eighth Dul'ont factor recognizes, the longer the period of concurrent use without any instances of actual confusion, the less likely it is that confusion will occur. This case involves a very long time of concurrent use-between thirteen and fourteen years-s-and not a single instance of actual confusion. Even if all other factors weighed in Chick-Fil-A's favor-which they do not-the substantial weight given to this factor given this fact pattern and its weight in favor of my client virtually mandate that there is no likelihood of confusion. The sixtllPolaroid factor is good faith intent in adopting the mark. Until 2006, my client was unaware of Chick-fil-A's advertising campaign or phrase. I-Ie developed his phrase independently and to reflect the Vermont culture and ethos. This is no surprise given the commonality of the phrase "Eat Mote" and the ubiquity of kale at Vermont's farmers' markets. My client's design and lettering is his own and a result of his creative process that shares 110 common elements with your client's design or lettering. The seventh Polaroid factor is quality of defendant's product inasmuch as its lesser quality may jeopardize the senior user's product, While my client's products are purposefully primitive, they are by no means inferior or lesser quality. My client uses extremely comfortable organic cotton t-shirts, soy ink, and one-at-a-time hand silkscreen processes to create memorable and unique products. These shirts are sought after for their quality, art, and manufacture as much as anything else. What my client's product lacks in marketing sophistication is more than equaled in the quality of his work. It is unlikely, apart from the other seven factors, that someone wearing one of my client's shirts would derive a negative impression of your client's chicken sandwiches and other food products. Even so, any consideration of my client's products' quality is inapposite in that Chick-Fil-A's services are so incredibly dissimilar to my client's goods. The final Polaroid and fourth Dul'oni factor addresses the sophistication of the buyers. As I discussed above, my client's products are more a reflection of a philosophical viewpoint than for the products themselves; consumers purchase my client's products to demonstrate a shared philosophical viewpoint. Purchasers of my client's products are very conscious of what

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Auma N. Reggy, Esq. November 17, 2011 Page 4 they are purchasing and from whom. My client maintains no permanent store front and any purchaser is likely to interact with him personally. Our research indicates that Chick-Fil-A is a privately held company and that its founder holds strong pro-family and Christian views, which are visible to consumers, in part,through the company's mandate to remain closed on Sundays. From the company's marketing, a large number of consumers visit Chick-Fil-A restaurants based on this philosophical or religious connection with the founder. This suggests that there is a level of sophistication with those consumers such that they will seek out and purposefully visit Chick-Fil-A. To the extent there are any unsophisticated consumers, the other factors far outweigh any possibility of a likelihood of confusion. Eat More Kale Is Entitled to Full Protection under the Doctrine of Laches My client has been making Eat More Kale shirts for more than 12 years. This is a significant amount of time that is likely to support a complete defense to any attempt to shut down my client's business. During the first seven years of his business, my client marketed and promoted his business in reliance that he was acting free and clear of any infringement issues. At no time was he aware or given notice of any claims of infringement. In September of 2006, however, your client sent him a cease and desist letter iterating many of the points you raised in your October 4, 2011 letter. My client responded through counsel that such allegations were untrue, that the products were different, and that no trademark violations followed. Your client, who was represented by another law firm, never responded or took any further action. My client relied on this silence and inactivity as acceptance of his position, and he went forward with his business in reliance upon this acceptance. It is both unfair and inequitable for your client to return to the field and resume its abandoned demands. The law requires trademark holders to actively defend their marks if they believe there is infringement. Your clients abandoned this position and any arguments against my client. It did so while maintaining other actions against other "Eat More" users and with the resources and disposition to prosecute actual or potential infringers. It chose not to take such action against my client. In the interim, my client has more than established his right to use the phrase "Eat More Kale." A review of Chick-Fil-A's litigation and TTAB activity demonstrates the lack of a challenge to the question of whether the EAT MOR CHIKIN mark is famous. Chick-Fil-A was lucky until now to be only challenging users of very young marks who were apparently willing to cease use. Now that the Trademark Dilution Revision Act of 2006-which eliminates niche fame and requires nationwide household name fame-has been enacted, a plaintiff alleging dilution has a tough row to hoe in establishing fame. As described above, the EAT MOR CHIKIN mark is not strong enough to carry a likelihood of conf-usion factor. It is hard to imagine that a mark that is a mere slogan (not even a house mark), that is used in a limited geographic area of the U.S., and that boasts a small amount spent on advertising qualifies for the post-2006 dilution protections. It is even more unlikely that Chick-Fil-A would be able to prove general household fame of the EAT MOR CHIK.IN mark at the time when the EAT MORE

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AumaN. Reggy, Esq. November 17,2011 Page 5 KALE mark was adopted by Mr. Muller-Moore, which is also an element of dilution. Unlike some of Chick-Fil-A's other targets, my client has invested more than a decade in his mark. Given the probability of success on the merits of his defenses and affirmative defenses, ChickFil-A may wish to reconsider its position. Please respond within two weeks (14) days respond shall be deemed a waiver of claims after understand if you need more time, but I must presented within that two week period so we know Thank you. Sincerely, to discuss the proposal. Silence or a failure to the two weeks. Notwithstanding that, I will ask that any request for additional time be where we stand.

Daniel Richardson

trJti;£

cc:

Robert Muller-Moore Ashlyn 1. Lembree, Esq.

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