Underdog Wins in Trademark Dispute Over Kale

by AEON Law on January 28, 2015

Kale defeats chicken

After long trademark dispute;

Vermont rejoices

After an eight-year legal battle, a Vermont kale fan prevailed in his effort to register Kale the trademark “Eat More Kale” with the US Patent and Trademark Office (USPTO). As reported in the Washington Post, Bo Muller-Moore began distributing T-shirts and bumper stickers emblazoned with the slogan in 2003. A budding screen-printing artist, he got the idea for the kale shirts from a farmer at the Montpelier Farmers Market and went on to sell several thousand per year at twenty-five dollars each. In 2011, Muller-Moore filed a federal trademark claim for use of the phrase on stickers, bags, T-shirts, onesies, and other items.

Chick fil-A, the fast food chicken chain, had launched an advertising campaign in 1995 with the slogan “Eat Mor Chikin.” The ads featured a “renegade cow” painting the words on a billboard in order to get consumers to switch from burgers to chicken. The misspellings in the chicken slogan are intentional, suggesting that cows don’t know how to spell very well.

According to Chick-fil-A’s website:

These fearless cows, acting in enlightened self-interest, realized that when people eat chicken, they don’t eat them… Needless to say, Chick-fil-A fully endorses and appreciates the monumental efforts made by our most beloved bovine friends.

Chick-fil-A first objected to Muller-Moore’s use of the Kale slogan in 2006, and sent him a formal cease-and-desist letter after he sought trademark protection in 2011. The company also ordered him to send Chick-fil-A his remaining inventory, putting him out of business. Muller-Moore made a living as a foster parent, and sold the kale items as a sideline.

Chick-fil-A told the USPTO that the kale phrase was “confusingly similar in sight, sound, meaning, and overall commercial impression” to the chicken phrase and that consumers would be misled into believing that Chick-fil-A had gone into the kale business. The chain cited thirty-one instances in which users of “eat more” slogans, for everything from goat to beer to ice cream, had agreed to stop using them upon receiving Chick-fil-A’s cease-and-desist letters.

In 2006, Muller-Moore sought help from the Vermont Arts Council and eventually found a Manhattan trademark lawyer to take the case pro bono. The attorney warned Chick-fil-A that going after a foster parent who also delivered Meals on Wheels as a volunteer would be terrible publicity for the chicken chain. Chick-fil-A then apparently ignored Muller-Moore for five years.

In 2011, upon Muller-Moore’s receipt of the cease-and-desist letter, his new Vermont trademark lawyer pointed out:

My client’s phrase shares only six out of twelve of the same letters as your client’s phrase and none of the imagery or conceits. My client has no cow designs which appear in conjunction with the phrase ‘Eat More Kale.’

The Trademark Office agreed that the marks were not confusingly similar and finally accepted Muller-Moore’s application.

There are a couple of possible lessons here:

  • While trademark owners need to protect their rights, they also need to consider the public relations implications when a Goliath goes after a sympathetic David who does not appear to be actually damaging the larger company’s business.
  • Although a billion-dollar-plus company certainly has an advantage in a trademark dispute, sometimes little guy wins.

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