On Friday, ABC News reported that a folk artist was granted his application to trademark “eat more kale.” The artist in this case is a Vermont-based individual with a silk screening business operated under the name Eat More Kale (www.eatmorekale.com) and on Friday the USPTO recently approved his application to register EAT MORE KALE for use in connection with various clothing items, stickers, bags and in connection with silk-screening services. The Huffington Post also ran a story entitled “’Eat More Kale’ Guy Beats Chick-Fil-A in Trademark Battle,” a development Vermont Governor Shumlin hailed on Friday as a victory for the little guy over a “corporate bully”, proclaiming “This isn’t just a win for the little guy who stands up to a corporate bully, it’s a win for our state.”
This case poses a number of interesting questions for brand owners.
First and foremost, was Chick-Fil-A a corporate bully or was it just asserting rights it is entitled to under the Lanham Act based on its incontestably registered EAT MOR CHIKIN mark covering overlapping goods in use since 1995 and well-known to many? The Lanham Act permits trademark owners the right to enforce their marks against infringement and dilution. Aside from the difference in type of food (CHI[C]KEN v. KALE), the marks are virtually identical and cover similar products. At the very least there would appear to be a good faith basis for a dilution claim. In this case, however, the Applicant reached out to the public via his website and other means, to defend his use of this mark by reframing it as David v. Goliath scenario that was divorced from an analysis of the rights a trademark owner, no matter how big and successful, is entitled to assert under federal law. The David v. Goliath message has broad appeal, as evidenced by the Vermont Governor who eagerly joined the conversation and embraced it as a political issue based on economic disparity.
Another interesting question is, what is a trademark owner to do when it finds itself facing a tenacious, small business second-comer who uses the power of the press and a political message to attempt to overshadow the analysis of the legitimate trademark rights at issue? In this case, it appears Chick-Fil-A ultimately made the savvy decision to refrain from pursuing an infringement or dilution action and issuing a statement that “Cows love kale too!” Chick-Fil-A’s decision to humorously embrace the issue and stand down may have been motivated by a desire to minimize negative repercussions in the court of public opinion, but was it at the cost of a permanent narrowing of its rights? Would Chick-Fil-A have made a different decision if the case had not been politicized or if the Applicant’s business was of bigger scale and reach? How and when a large, successful trademark owner decides to continue to pursue an infringement or dilution action in the face of being accused of trademark bullying is undoubtedly case specific, but the use of social media to politicize the issue in the powerful court of public opinion is not to be underestimated.