Discussing trademark law blogging with a colleague last night, I was asked whether I’d written anything about the EAT MORE KALE story. In order to excuse my laziness, I said, well, these low-hanging-fruit items that everyone is busy with, why, I let everyone else opine on them, see, and then I come in later and set everybody straight.
Sue anything you want about me, so long as you sue me
I didn’t exactly say it that way but I think it may have sounded like that.
Well, I’m still not sufficiently up to speed on the issue to have anything to say about it that isn’t pretty obvious already. But I like this well-balanced take from my friend Steve Baird:
A couple of quotes from the NY Times article caught my eye:
“In a statement, Chick-fil-A said, ‘We must legally protect and defend our ‘Eat mor chikin’ trademarks in order to maintain rights to the slogan.'”
So, Chick-fil-A, am I hearing right, you’re saying “there’s a chance,” of becoming generic and losing all rights in your “Eat Mor Chikin” slogan if Bo continues selling his “Eat More Kale” products?
Here’s the response from Bo’s pro-bono counsel:
“We believe it’s pretty clear, the issue of dilution and confusion aren’t really triggered here,” he said. “There’s no one out there that’s going to come forward and say, ‘I thought I was buying a Chick-fil-A product but I got this T-shirt.’”
I’m thinking both missed the mark a bit.
As to Chick-fil-A’s position, there is no legal obligation to enforce, and the risk of trademark genericide here seems even more exagerrated and remote than the risk of genericide when brandverbing — something that significant brand owners have learned to manage.
And as to Bo’s position, while I agree with the conclusion that there is no likelihood of confusion or dilution here, whether consumers confuse the products — chicken sandwiches and t-shirts — is not the test of likelihood of confusion or dilution.
Yeah, see, it’s almost never like they set it up in the papers, or the way the lawyers spin it for the papers. And this thought reminded me of how I wanted to expand a little on something I wrote at the end of this post last week:
You can be very much a lawyer and sign off on a position that isn’t justified in an absolute or abstract sense but which falls short of being frivolous. Especially because so many positions like that … work.
I thought of that today when I filed a declaratory judgment action on behalf of a client that had received a series of completely spurious cease and desist letters claiming both trademark and copyright infringement, along with the usual bluster about statutory damages and attorneys’ fees, for conduct that was simply, utterly not remotely colorable as a trademark or copyright infringement. The demand letter insisted that, to avoid litigation in a faraway locale, my client “cease any and all unauthorized use of the XYZ Marks and all variations thereof. This includes all advertising and promotional efforts, including Internet-related activities and any keywords, adwords or domain names that make any reference to the XYZ Marks.”
“Make any reference to the XYZ Marks”?
I might ask, when are lawyers going to have the nerve to tell their clients, “We can’t demand that. You can’t stop people from talking about you on the Internet or anywhere else by claiming that they are infringing your trademark if they do.” But then I remember cases like the Jones Day debacle where the plaintiff law firm achieved just that. It happens every day. It often works.
I have written so many times, from so many perspectives, about trademark bullying, and my disappointment in the judges who let it happen, that even I am bored of reading it. Is there another way of looking at it, though? Read More…