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Eat More Kale Trademark Dispute Is A David vs. Goliath Situation


January 23, 2015
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The battle over the Eat More Kale trademark appears to be over. After a much-publicized dispute with fast-food company Chick-fil-A, a Vermont small business owner can now take the final steps to perfect his federal trademark.

The trademark row started in early 2011 when folk artist Bo Muller-Moore filed for trademark protection for use of the phrase on hand-screened t-shirts, which are sold in Vermont and across the country via the Eat More Kate website. Chick-fil-A subsequently sent Muller-Moore a cease and desist letter, which demanded that Moore stop using the mark because it is too similar to the company’s trademarked “Eat Mor Chickn” slogan.

In response to the demand letter, which cited 30 other instances where companies agreed to stop using similar slogans, Moore took to social media, where he garnered nearly 15,000 Facebook fans. In addition, more than 42,000 supporters signed an online petition, which called for Chick-fil-A to “stop bullying small business owners.”

In an attempt to protect its trademark, Chick-fil-A also filed a letter of protest with the U.S. Patent and Trademark Office, which preliminarily agreed that there was a likelihood of confusion between Muller-Moore’s mark and Chick-fil-A’s advertising slogan. According to the examiner, “The marks urge action in the same way, only as to different substances, and both of them are commonly consumed types of food.”

As previously discussed on the Scarinci Hollenbeck Business Law Blog, the USPTO may refuse to grant trademark protection for marks that are likely to cause confusion with existing marks. Factors that are taken into consideration include: the similarity or dissimilarity of the marks in their entirety as to appearance, sound, connotation, and commercial impression; similarity or dissimilarity of established, likely-to-continue trade channels; the fame of the prior mark; and the nature and extent of any actual or potential confusion.

Over a three-year period, Moore not only generated public support, but was also able to convince the USPO that a likelihood of confusion did not exist. In December, the USPTO issued a Notice of Allowance for the “Eat More Kale” mark, after no opposition was received when the mark was formally published.

Ultimately, Chick-fil-A decided to abandon its opposition to the trademark, likely for business rather than legal reasons. Its depiction of a corporate bully was far more damaging than the potential brand dilution. The fast-food company even attempted to interject humor into the situation by releasing a statement that “cows love kale too!”  

As the case regarding the Eat More Kale dispute highlights, trademarks are valuable to businesses of all sizes. For more information about prosecuting a trademark application or defending your registered mark, please contact one of our experienced intellectual property lawyers.