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October 4, 2011 VIA FEDERAL EXPRESS Daniel P. Richardson, Esq. Tarrant, Gillies, Merriman & Richardson 44 EastState Street Montpelier, VT 05602-3009
Infringement and Dilution of CFA Properties, Inc. and Chick-fil-A, Inc.'s Intellectual Property Our Reference: 26557.3
Dear Mr. Richardson: As a follow-up to our conversation of last week and per your request, I am sending you a letter with our demands for discussion with your client. As I mentioned, we represent CFA Properties, Inc. and its licensee, Chick-fil-A, Inc. (collectively, "Chick-fil-A"), with respect to intellectual property matters. As you may know, Chick-fil-A is the secondlargest quick-service chicken restaurant company in the United States and has employed a long-running, award-winning, and very popular, successful, and well-known advertisement campaign that features cows encouraging the consumption of chicken rather than beef. This campaign generally features cows holding or painting signs or sandwich boards that contain phrases such as "EAT MOR CHIKIN" (the "EAT MOR CHIKIN Intellectual Property"). Chick-fil-A has continuously and exclusively used its EAT MOR CHIKIN Intellectual Property in commerce since at least as early as June 19, 1995. Additionally, Chick-fil-A has common law trademark and copyright rights and owns numerous U.S. and international trademark and copyright registrations for these and other items of intellectual property. Specifically, Chick-fil-A owns U.S. trademark registrations for both EAT MOR CHIKIN (Registration Nos. 2,010,233, 2,062,809, 2,197,973, and 2,240,326) and cows holding sandwich-boards reading "EAT MOR CHIKIN" (Registration Nos. 2,538,050 and 2,538,070). Chick-fil-A also owns U.S. copyright registrations for its designs of cows holding sandwich-boards reading "EAT MOR CHIKIN" (Registration Nos. VA 760-668, VA 753-425, and VA 784-941). The EAT MOR CHIKIN Intellectual Property is highlyAtlanta Washington, D.C.
17117th Street, NW• Suite 2100 • Atlanta, GA• 30363-1031 I 404.873.8500· f 404.873.8501 2001 Pennsylvania Avenue, NW• Suite 250 • Washington, D.C. • 20006 I 202.677.4038. f 202.677 .4039
Arnall Golden GregorYLLP
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recognized and is and has been the subject of extensive and continuous national and regional print, outdoor, television, radio, and in-store advertisements, sponsorships, and merchandising. As a result of Chick-fil-A's extensive advertising and promotion of its EAT MOR CHIKIN Intellectual Property, these trademarks and copyrights are famous and well known. It has come to our attention that your client, Robert Muller-Moore DBA Eat More Kale, has filed on August 31, 2011 a combination use-based and intent-to-use application with the U.S. Patent and Trademark Office (the "USPTO") for Eat More Kale (Serial No. 85/412053) for "stickers; fabric gift bags; grocery bags; paper bags" in International Class 16, "hooded sweat shirts; infant and toddler one piece clothing; long-sleeved shirts; shirts; shirts and short-sleeved shirts; shirts for infants, babies, toddlers and children; snap crotch shirts for infants and toddlers; sweat shirts; t-shirts; t-shirts for men, women, infants, toddlers, and children; tee shirts; wearable garments and clothing, namely, shirts; women's clothing, namely, shirts, dresses, skirts, blouses; turtle neck shirts; yoga shirts" in International Class 25, and "imprinting of decorative designs on t-shirts; screen printing; silk screen printing" in International Class 40 (the "Eat More Kale Mark"). As I mentioned on our call, the attempts by your client to expand protection for the Eat More Kale Mark beyond its current, extremely limited scope and volume of use, is a clear encroachment upon Chick-fil-A's prior and superior nationwide trademark rights. As noted in the USPTO records, your client alleges a first use date that is clearly after that of Chick-fil-A. Your client's Eat More Kale Mark plays off of and imitates Chick-fil-A's valuable EAT MOR CHIKIN Intellectual Property by using a prefix confusingly similar to Chick-fil-A's federally registered EAT MOR CHIKIN trademarks. Your client's misappropriation of Chick-fil-A's EAT MOR CHIKIN Intellectual Property, to playoff of and benefit from the extraordinary fame and goodwill of Chick-fil-A's trademarks, copyrights, and popular promotional campaign, is likely to cause confusion of the public and dilutes the distinctiveness of Chick-fil-A's intellectual property and diminishes its value. Such actions constitute trademark infringement, dilution, and unfair competition in violation of federal and state law. As you know, marks need not be identical for a likelihood of confusion to arise between them. As the USPTO's Trademark Manual of Examining Procedure provides, "[m]arks may be confusingly similar in appearance despite the addition, deletion or substitution of letters or words." TMEP § 1207.01(b)(ii) (citing In re Curtice-Burns, Inc., 231 U.S.P.Q. 990 (T.T.A.B. 1986) (holding MCKENZIE'S Stylized for processed frozen fruits and vegetables likely to be confused with MCKENZIE for canned fruits and vegetables); In
Arnall Golden GregorYLLP
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re Pix of America, Inc., 225 U.S.P.Q. 691 (T.T.A.B. 1985) (holding NEWPORTS for women's shoes likely to be confused with NEWPORT for outer shirts)). Additionally, the USPTO has routinely found marks confusingly similar that included similar prefixes. See generally J. Thomas McCarthy, MCCARTHY TRADEMARK ON AND UNFAIRCOMPETITION, 23:55 (4th ed. 1997) (ARM & HAMMER vs. ARM IN ARM; § BEANIE BABIESvs. BEANIE RACER; CENTURY 21 vs. CENTURY 31; HONEST DINER vs. HONEST BAKER; L'EGGS vs. LEG LOOKS). Other than Chick-fil-A's aforementioned EAT MOR CHIKIN federal trademark and service mark registrations, there are currently no federal registrations that include either of the prefixes "EAT MOR" or "EAT MORE" and another animal or food or beverage product and that identify food-related products or services, clothing, or other products or services sold or offered by Chick-fil-A. Thus, it is clear that the "EAT MOR CHIKIN" marks are strong, and Chick-fil-A will exercise every legal means available to it to ensure that its marks are not diluted. Additionally, we note that the USPTO has acknowledged Chick-fil-A's Affidavits of Incontestability for all of its "EAT MOR CHIKIN" trademark and service mark registrations for which it has filed such affidavits. Thus, because Chick-fil-A's right to use its EAT MOR CHIKIN mark has become incontestable, the registrations are conclusive evidence of: (1) the val id ity of the EAT MOR CH IKIN Intellectual Property and registrations; (2) Ch ick-fi I-A' s ownership of the EAT MOR CHIKIN Intellectual Property; and (3) Chick-fil-A's exclusive right to use the EAT MOR CHIKIN Intellectual Property in commerce. Further, we note the following quotes concerning the fame of Chick-fil-A's MOR CHIKIN Intellectual Property: EAT
1. "Another component contributing to the success of [Chick-fil-A] was the introduction of the famous 'Eat Mor Chikin(R)' Cows. Debuting in 1995, the Chick-fil-A Cows made their mark via a clever billboard campaign with the impassioned plea to 'Eat Mor Chikin.' Since that time, the Cows and the award-winning Eat Mor Chikin campaign have enjoyed such widespread public success that the chain has turned the theme into its most successful, fully-integrated marketing program ...Total sales of 'Eat Mor Chikin' themed clothing, merchandise and calendars are expected to surpass $13 million by the end of 2000. "Additionally, the Eat Mor Chikin campaign ...has attained critical success and recognition from the advertising community. Since the campaign's debut, the series of awards it has
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received include three of the advertising industry's most prestigious awards: 1996 OBIE Award (outdoor advertising); 1997 Silver Lion-Cannes International Festival (outdoor advertising); and 1998 Silver EFFIE-New York American Marketing Association (creativity and effectiveness in advertising)." Chick-fil-A Reaches Billion in Sales Milestone; Restaurant Chain Attributes Dedication to Customer Satisfaction, PR NEWSWIRE, December 11,2000. 2. "Anyone who's heard of Chick-fil-A has seen those semiliterate cows imploring us to 'EAT MOR CHIKIN'." Bill Banks, Road to Chicken Riches Named for Founder, THEATLANTA JOURNAL-CONSTITUTION, February 21, 1999, at F4. 3. "Chick-fil-A continues to make marketing hay with its famous "Eat Mor Chikin" cows, which debuted in 1995." Gregg Cebrzynski, Execs tackle culture issues at NRN Marketing Roundtable, NATION'S RESTAURANT NEWS, ugust 6, 2001, at p. 20. A 4. "Ch ick-fi I-A, the fast-food eatery famous for the dancing black-and-white cows crowing 'Eat more chicken' in its ads..." Tony Adams, Police chasing alleged rustlers of Kadie's calf; Best Buy had 200 suggestions for naming calf, COLUMBUS LEDGER-ENQUIRER, October 18, 2003. 5. "(Chick-fil-A's] famous, spelling-challenged cows try to persuade the nation to "eat mor chikin," Benita Newton, Getting in the Spirit, THEVIRGINIAN-PILOT, November 19, 2004, at 01. We also note the following honors Chick-fil-A has received for its "Eat Mor Chikin" campaign: 1. Recognized in 2007 as one of America's most popular advertising icons in a public vote sponsored by Advertising Week and became the newest members of New York's Madison Avenue Advertising Walk of Fame. A permanent banner to recognize this achievement now hangs on Madison Avenue in New York City. 2. Inducted into The Outdoor Advertising Association of America's (OAAA) OBIE Hall of Fame. OAAA presents the award annually to brands that have displayed outstanding outdoor creative work over an extended period of time. 3. Recently received another Effie Award in the "Sustained Success" category for creativity and effectiveness in advertising.
Arnall Golden GregorYLLP
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Additionally, we note the following uses of confusingly similar marks in which the owners/users of these marks agreed to cease and desist thei ruse: 1. 2. 3. 4. 5. 6. 7. 8. 9. 1O. 11. 12. 13. 14. 15. 16. 17. 18. 19. 20. 21. 22. 23. 24. 25. 26. 27. 28. 29. 30. EAT MORE BEEF EAT MORE CHICKEN EATMORE CHICKEN EAT MOR CHIKUN EAT MORE BURGERS EAT MORE BEER (including the voluntary abandonment of this infringer's federal service mark application for same) EAT MORE POULTRY EAT MORE PORK EAT MORE POURK EAT MORE HAM EAT MORE BUFFALO EAT MORE FISH EAT MORE CATFISH EAT MORE GOAT EAT MORE KARIBOO EAT MORE BURRITOS EAT MORE DOG EAT MORE MOO EAT MORE BAR-B-QUE EAT MORE VEGETABLES EAT MORE YOGURT EAT MORE ICE CREAM EAT MORE CHOCOLATEI (including the voluntary abandonment of this infringer's federal service mark application for same) EAT MORE CEREAL EAT MORE BEER (including the voluntary abandonment of this infringer's federal service mark application for same) EAT MORE AUTHENTIC EAT MORE MUSIC EATMORKOSHER EAT MORE TREATS (including the voluntary abandonment of this infringer's federal trademark application for same) EAT MORE TAIL (including the voluntary abandonment of this infringer's federal trademark appl ication for same)
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We also note that Chick-fil-A has commenced the following the use of confusingly similar marks by third parties:
1. Chick-fil-A. Inc. v. Burger King Corporation, filed in the United States District Court for the Northern District of Georgia, Atlanta Division, Civil Action No. 1:00-CV'1657, concerning Burger King's national advertising and promotional campaign featuring animated chickens from the Chicken Run movie that display hand-painted signs, which included phrases such as "Eat More Beef"'; 2. Chick-fil-A, Inc. v. International Printing & Ad Specialties. Inc. d/b/a Team IP Sportswear et ai, filed in the United States District Court for the Northern District of Georgia, Atlanta Division, Civil Action No. 1:00-CV-0161, concerning the defendant's manufacture of shirts and other items that included Chick-fil-A's Holstein cows and its "EAT MOR CHI KIN" marks; and 3. Chick-fil-A, Inc. v. Ty, Inc., filed in the United States District Court for the Northern District of Georgia, Atlanta Division, Civil Action No. 1:97-CV-1922, concerning the defendant's "Doodles" stuffed animal. Moreover, Chick-fil-A opposed Seafood Restaurants Northwest, LLC's federal trademark application for EAT MORE FISH (Opposition Action No. 91157842). Although the matter was settled before the TTAB rendered a judgment, the applicant agreed to cease all use of the infringing mark. Chick-fil-A also opposed Chocolate Bar, LLC's federal service mark application for EAT MORE CHOCOLATE! (Opposition No. 91185463). In this case, the applicant expressly abandoned its application and agreed to cease all sourceidentifying, trademark usage of the infringing mark. Accordingly, Chick-fil-A hereby demands that your client: (1) immediately expressly abandon Application Serial No. 85/412053 by filing an Express Abandonment of Application with the USPTOi and (2) cease and forever desist all plans to expand and current expansion of use of the Eat More Kale Mark. Please also contact me to arrange for transfer of the < eatmorekale.com > domain name to Chick-fil-A. We note that Chick-fil-A would not object to your client's uses of "Eat Kale" or < eatkale.com >. Please acknowledge and respond to this letter within seven (7) business days of your receipt of same confirming your client's understanding of this letter and its agreement that it will comply with the demands herein.
Arnall Golden GregorYLLP
Daniel P. Richardson, Esq. Tarrant, Gillies, Merriman & Richardson October 4, 2011 Page 7
Please understand that all of Chick-fil-A's intellectual property is extremely valuable to it, and it will pursue all available remedies, including opposing your client's application, in the event it fails to comply with this demand. This demand is made without waiver of any rights or remedies available to Chick-fil-A at law or in equity, which are expressly reserved.
AGREED AND ACKNOWLEDGED:
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