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Trademark Enforcement, Trademark "Bullies" and Social Media

A few weeks ago, while in Montpelier, Vermont, I stumbled upon a Farmer's Market that featured a wealth of Vermont made, grown and raised art, produce and meats.  In the midst of this bounty was Bo Muller-Moore, a self-described folk artist who is the creator of t-shirts proclaiming EAT MORE KALE.  Muller-Moore silkscreens these t-shirts by hand in his home and distributes them at local farmers markets and through his website.  Aided by the rapid growth of the local food movement, his message has caught on.  As many successful entrepreneurs do, Muller-Moore filed a federal trademark application for the trademark EAT MORE KALE used in connection with clothing, stickers and bags in order to protect his trademark rights in the locavore slogan.  The application is currently pending.

Enter Chick-fil-A.  Chick-fil-A is the second largest fast-food chicken restaurant chain in the United States.  Chick-fil-A is also the owner of the federally-registered trademark EAT MOR CHIKIN, which it has used in connection with clothing (and restaurant services) since 1995.  In October, Chick-fil-A sent Muller-Moore a cease and desist letter demanding that he stop using the EAT MORE KALE phrase and surrender his website to Chick-fil-A.  It turns out that Chick-fil-A sent a similar letter to Muller-Moore five years earlier, in which it demanded that Muller-Moore surrender his inventory of EAT MORE KALE t-shirts.  When Muller-Moore refused, Chick-fil-A eventually backed off.  But then came Muller-Moore's federal trademark application, which appears to have been the proverbial straw that broke the chicken's back.

Rather than recoil, Muller-Moore has used social media and the press to defend his right to use the EAT MORE KALE slogan.  In addition to waging the war of public opinion on Facebook, Muller-Moore supporters have started a petition on entitled "Chick-fil-A:  Stop Bullying Small Business Owners," which has nearly 23,000 signatures.  Plus, the national media have picked up the story (including Muller-Moore's David v. Goliath thread of corporate bullying).  The issue of corporate bullying of small Vermont businesses resonates in Vermont, particularly with Senator Patrick Leahy.  In 2009, a Vermont business, Rock Art Brewery, was sued for trademark infringement by Hansen Beverage, the makers of Monster Energy drinks, based on use of VERMONSTER on beer. Hansen subsequently dropped its claim (after Rock Art Brewery agreed not to use the VERMONSTER mark on energy drinks).  But not before Senator Leahy spearheaded an effort to require a Congressional study of the trademark bullying issue.  When he introduced the results of the study in April 2011,  Senator Leahy said: ''I am concerned that large corporations are at times abusing the substantial rights Congress has granted them in their intellectual property to the detriment of small businesses.''  The report, though, was inconclusive and has not put an end to "trademark bullying" stories.  In fact, the New York Times recently featured a story about Proctor and Gamble (and its WELLA trademark) taking aim at a business-minded mother who created a line of pre-teen skincare products named after her daughter, WILLA.  That dispute eventually settled as the trial date approached, but not before Procter and Gamble sought extensive discovery and subpoenaed potential WILLA customers.  Similarly, as with the EAT MORE KALE dispute, the WELLA v. WILLA dispute was widely reported in the media leading up to the trial, which may have contributed to the settlement.

Putting aside the issue of whether large corporate trademark owners are bullying small businesses or merely protecting their intellectual property interests, the EAT MORE KALE v. EAT MOR CHIKIN dispute highlights the increasingly important role played by social media (and public relations) in trademark enforcement matters.  Social media provides an easy outlet for recipients to start an anti-brand owner campaign. The small business owners in the EAT MORE KALE and WILLA stories have garnered significant public sympathy and attention.  With these examples in mind, brand owners should give thought not only to protecting trademark rights, but also to preserving corporate reputations and consumer goodwill.

In today's social media context, trademark owners should expect that cease and desist letters are likely to go viral.  As a result, they may create unwanted public relations issues. When confronted with a party that is using your trademark (or, arguably, a confusingly similar trademark) without permission, it is important to research the user.  Find out whether the user is a fan, a parodist, a student, a counterfeiter, a cybersquatter or an individual or small business that may curry favor/sympathy with the public.  What you learn about the user should influence the tone of and demands made in your letter.  Refine cease and desist letter to fit particular situations.  Form letters often are ineffective and may provoke a response that is more hostile than one that sets a more reasonable tone.  And keep in mind that, although you are addressing the letter to an individual or business, the letter has the potential to reach a much wider audience.  When in doubt, pick up the phone.  A one-on-one conversation may be an effective way to resolve the issue amicably -- without creating a paper trail.  In appropriate circumstances, consider permitting continued use of the trademark by the third-party in a controlled fashion.  For example, a trademark owner could require a website/web-based business to include a disclaimer that it is not affiliated or associated with the trademark owner.  In the alternative, the brand owner could consider requiring that a hyperlink to the Web page of the trademark owner be provided.

The explosive growth of social media requires a corresponding adaptation of how trademark owners (and trademark lawyers) evaluate and respond to potential infringement issues.

[UPDATE: On December 18, 2011, the U.S. Trademark Office issued an office action in connection with the EAT MORE KALE application.  The examining attorney stated:  "The Office records have been searched and  there are no similar registered or pending marks that would bar registration  under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02."  So, the Trademark Office did not cite Chik-fil-A's prior registration of the EAT MOR CHIKIN mark as a bar to registration of the EAT MORE KALE mark on likelihood of confusion grounds.]

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Geri Haight is a Mintz Member and former in-house counsel who focuses on employment litigation, counseling, and compliance, as well as intellectual property and trade secret matters.