MEMO TO CHICK fil-A: WHEN PEOPLE THINK YOU ARE A BULLY YOU GET TO EAT MORE CROW.

Is this yet another example of the “what in the world were they thinking” hubris that often brings well-known brand owners to their knees? 

 Mr. Bo Muller-Moore, a T-shirt artist in Vermont, has been producing EAT MORE KALE T- shirts, bumper stickers, and paraphernalia for many years.

Somehow he showed up on the radar screen of the lawyers for Chick- fil-A, the well-known fast food restaurant chain. They contacted him several years ago and told him that since Chick- fil-A was using the phrase EAT MOR CHIKIN to identify fast food chicken products and as a domain name he should immediately stop using the phrase EAT MORE KALE for T shirts and bumper stickers.

Through his lawyer, Mr. Muller-Moore told Chick- fil-A to take a hike. Which they did.

Fast forward to August of this year. Mr. Muller-Moore had the audacity to file a federal trademark application to support his use of the phrase EAT MORE KALE, for the shirts and bumper stickers he has been producing all these years.  That prompted Chick fil-A to send him another warning letter. As reported in the Burlington Free Press, Chick- fil-A’s lawyer claims that EAT MORE KALE plays off, imitates and misappropriates Chck -fil-A’s “intellectual property” right in the phrase EAT MOR CHIKIN.

I find this use of the term intellectual property to be revealing.  Why? Because I believe it shows a mindset that propels the conduct of many contemporary brand owners.

Will Chick- fil-A be forced to back off or back down? I would bet my usual ham sandwich the answer is “You betcha”. The public anger and backlash is in full flower. The petition drive to get them to drop their objections is up and running. If the facts are as reported, it’s virtually impossible to see them proving that customers for their chicken sandwiches will be confused, mistaken, or deceived when they see the phrase EAT MORE KALE on T-shirts. Not only that, they made the mistake of complaining to Mr. Muller-Moore, then walking away when he pushed back several years ago.

Just another case of over the top corporate hubris? Just another classic case of trademark bullying? Yes to both.

But I believe there is an additional explanation. Whether by accident or design, brand owners like Chick- fil-A, seek to assert legal rights in words. Not words that identify goods or services. Words.

Chick- fil-A wants to own the phrase “ EAT MOR[E]____. Apparently they are willing to put up with the bad press to stake their claim. But the only way that they can own this phrase is to prove that EAT MOR is so widely recognized across the full spectrum of American commerce that they are entitled to claim it as their intellectual property.

Does Chick- fil-A have a rational basis to make this claim.

Not from my vantage point. They have fallen victim to the same internally generated view of the world that has their brands at the center of the universe. 

So now  Chick- fil-A must confront reality. They think that the phrase EAT MOR CHIKEN is famous. It ain’t. Not only that but EAT MORE KALE and EAT MOR CHIKEN are almost certainly going to be allowed to co-exist.

Time to EAT MOR CROW.

MEMO TO SIMON COWELL: YOU MAY BE A BULLY ON TV BUT YOU DON'T SEEM TO BE A TRADEMARK BULLY

Call me an elitist. Call me an idiot. But I have never seen the AMERICAN IDOL television show. However I do have a pulse. So I am aware of Simon Cowell's well earned reputation as a mean spirited, cynical, bordering on cruel, talent judge. Sure sounds like the personality profile of a trademark bully.

Ah trademark bully. Now there's a term that any geek would love. And sure enough she does. My colleague Lara Peterson rides herd on the brandGEEK law blog. Lara is the head of a fancy schmancy committee devoted to understanding, examining, and defining the term trademark bully(ing). You can find the committee members here:http://brandgeek.net/2011/10/10/brand-bully-basement/.

What does any of this have to do with Simon Cowell?  In the UK Mr. Cowell has been labelled a trademark bully. Unfairly IMHO. Here's the basic story: Mr. Simon's company owns or manages an all girl rock band. The company decided to name the band RYTHMIX.  So they filed an application to claim the name.  No problem right?

Big problem. Turns out a music based charity was already calling itself Rythmix. And these folks are not fools. After some (apparent) back and forth, Rythmix started a social media campaign against Mr. Cowell and his company. They were not shy about reminding him of how wonderful they were.

And it worked. Mr. Cowell's company announced their intention to withdraw their application.  End of problem right?

Wrong. The folks at Rythmix have gone public again. They are complaining that Mr. Cowell's company did NOT abandon their trademark application. Not only that, they want Mr. Cowell to pay for their legal fees. In their view these fees will take hundreds of hours of music instruction away from children. 

And Mr. Cowell's response? His lawyers did not withdraw their application because they wanted to transfer it to the good folks at Rythmix. NO THANKS say the folks at Rythmix. You want us to not say a peep if you transfer the trademark application to us.

And what does all this have to do with trademark bullying.  Nothing. And that's my point. This is the sort of  trademark dispute that  has been going on since God was new.  Ironically, the potential bully was the junior rights holder. And, after initial negotiations, when faced with a possible conflict, the junior rights holder left the playing field.  Were there  costs? Of course.  Might Mr. Cowell pay the charity's legal fees as an act of generosity? Perhaps.  But, based on the many news reports describing this incident, it seems that a a savvy non profit is slinging around the loaded term trademark bully to put pressure on  larger commercial enterprise headed by a well known celebrity.
Perhaps our committee will need to wrestle with a new concept: reverse trademark bullying.

MEMO TO TIFFANY: YOUR ATTORNEYS SAY: THANKS FOR THE WORK. I SAY : WHY DID YOU BOTHER?

As has been widely reported the fashion shoe company Christian Louboutin was rebuffed in its efforts to stop Yves St. Laurent from using the color red on certain YSL high fashion shoes. This despite the fact that Louboutin has developed  a recognized trademark for the color  red applied to the outsoles of all Louboutin shoes. I have already written a post criticizing the district court decision. And sure enough Louboutin  appealed.

Now Louboutin has an ally. Tiffany, the world famous jewelry company, has filed a friend of the court legal brief that encourages the Second Circuit to overturn the district judge and enforce Louboutin's trademark in the color red. In a sense you can readily understand why Tiffany would be concerned. They too claim ownership of a distinctive blue trademark( Tiffany blue) used on boxes and bags for their jewelry.

The Tiffany lawyers rip Judge Marrerro's decision to shreds. But they fail to fully address the one fact that makes the case troublesome. The fundamental tenet of trademark law is that the verbal or non verbal symbol being claimed should stand apart from the product it identifies.  Of course I cannot use Tiffany blue for a box or bag, at least not for jewelry. But I can slavishly copy a Tiffany ring or bracelet  (not otherwise protected) so long as I distinguish my name and  my packaging.

But the Louboutin red trademark is embedded in the outsole of its shoes. To honor that trademark means limiting how others can produce their shoes. The brand no longer stands apart from the object it identifies.  In theory the functionality doctrine is meant to limit what would otherwise be deemed a trademark. Judge Marrerro takes a crack at the trademark functionality doctrine.  The Tiffany lawyers propose a standard that would apparently exempt any brand from ever being functional.

I don't know if the Second Circuit will find the Louboutin outsole to be functional. But I'm certain that they will see the mischief that results when the brand and the product are intertwined. I am betting my usual ham sandwich that Louboutin will not overturn judge Marrerrro's decision.

My suggestion: rather than fudge the matter,  the Second Circuit should take the chance to reign in  what can qualify as a trademark. Tell brand owners that they can't use trademark law as a means of monopolizing a product feature or attribute. Not just color. But any feature or attribute that is embedded in the product at issue.

And not just the fashion industry. Which isn't, as it turns out,  all that special.