Trademark Protection...A Tough Job, but Everybody Has To Do It
A cornerstone of Trademark Law is the obligation of the owner of a Mark to defend against the Mark’s unapproved usage by others. The primary Federal Statute covering Trademark matters is referred to as the Lanham Act which begins at 15 U.S. Code Section 1051. A Trademark can be a word, symbol or phrase used to identify a specific product. Marks registered in connection with services are referred to as Service Marks, but the Lanham Act treats both Trademarks and Service Marks (“Marks”) similarly. Registration of your Mark will provide nationwide notice that your Mark is owned by you and that you are permitted to bring action to protect that Mark in Federal Court –in addition to preventing usage by the adverse party you may also claim (and may recover) treble damages and attorney’s fees.
Once registered with the US Patent and Trademark Office, it is possible to lose the benefits of registration of the Mark. This loss can occur based on abandonment of the Mark by the Owner (i.e., where use is discontinued by the Owner with no intent to resume use), improper assignment or licensing of the Mark (i.e., where the Owner grants another the right to use the Mark, but fails to ensure quality control or to supervise appropriate usage of the Mark) or “generality” (i.e., where Marks that were originally distinctively aligned with a product become so “general” over time that the unique relationship is lost). Companies seeking to protect their Marks may bring infringement or dilution claims against unauthorized users of their Marks or names/designs substantially similar to their registered Marks.
An interesting Trademark battle over these legal principals is underway now between Chick-fil-A and Vermont Artist Bo Muller Moore. Chick-fil-A has used the slogan “Eat Mor Chiken” in ad campaigns for over 16 years and, as a result, when most motorists see a billboard with two black and white cows and the phrase “Eat Mor Chiken” – they start looking for a Chick-fil-A at the next exit. Fast forward to 2006 and you will find Vermont based artist Mr. Muller-Moore printing t-shirts that say “Eat More Kale.” There are differences, of course – think spelling challenged cows versus spelling champion vegetarians. The unlikelihood of product confusion (white meat and green leafy stuff) is clear. However, remember that the Mark protection issue facing Chick-fil-A is the need to preserve the “unique” relationship in the public’s mind between the phrase “Eat Mor Chiken” and the restaurant’s products. Failure to police the Mark could be the first step down a slippery slope toward the USPTO determining that the phrase is, in fact, too general to deserve protection.
Chick-fil-A has acknowledged the entrepreneurial spirit of the artist and small businesses in America; noting proudly that all of their franchises are owned and operated by local business owners. However, they state that they must continue their opposition to “Eat More Kale” in order to “legally protect and defend our ‘Eat Mor Chiken’ Trademarks.”
IF you would like to read more about the Chick-fil-A Trademark action, see
Chick-fil-A picks a bone with kale eater over alleged trademark violation and Chick-fil-A says it will fight Vt. man for slogan. If you have questions about filing for a Mark or protecting a registered Trademark or Service Mark, call an intellectual property or business lawyer at Wood, Atter & Wolf, P.A., with offices in northeast Florida.
