Thanks to DuetsBlog for providing an update on the EAT MOR CHIKIN v. EAT MORE KALE dispute that was the subject of our prior post.  As we reported in December, the Trademark Office issued an office action on the pending trademark application for EAT MORE KALE for t-shirts, etc. and determined that “no similar registered or pending marks … would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02 [likelihood of confusion grounds].”  Shortly after issuance of this office action, as reported, an “Administrative Response” appeared in the prosecution file entitled “Letter of Protest Memorandum.”  The memorandum noted that the Office of the Deputy Commissioner for Trademark Examination Policy had granted a Letter of Protest filed by an undisclosed party and specifically directed the examiner to consider U.S. Reg. Nos. 2,062,809, 2,197,973, 2,538,050 — registrations for EAT MOR CHIKIN owned by Chik-fil-A.  The examiner must now make an “independent determination whether to issue a requirement or refusal based on the objections raised in the Letter of Protest.”  So, the Letter of Protest has the potential to bring the likelihood of confusion issue to a head before Chik-fil-A had to decide whether to initiate a formal opposition proceeding, which is helpful given the press attention that this particular dispute has received.

So what is a Letter of Protest (LOP) and how does it work?  Continue Reading Letters of Protest: A Tool To Avoid The “Trademark Bully” Label

The Wall Street Journal had a piece recently about how the recipients of trademark infringement cease and desist letters are increasingly using “online shame” to gain leverage in disputes with trademark owners.  As “trademark bullying” is a hot topic among trademark lawyers and in the press, this article picks up on that theme.  It highlights a dispute between a small online cookbook entrepreneur who allowed users to save recipes by clicking on a “K” for “Keep” and a trademark owner who asserted rights to the marks K and KEEP in a strongly worded cease and desist letter.  In response, the cookbook entrepreneur posted the cease and desist letter online at, an organization that “aims to support lawful online activity against the chill of unwarranted legal threats[.]”   As the WSJ article reports, the cease and desist letter got attention and the cookbook entrepreneur is now being represented — free of charge — by legal counsel. Continue Reading Using Online Shame as a Defense to a Trademark Infringement Claim May Not Always Be Effective

The New York Times had an interesting article about the ongoing dispute between Princeton Vanguard and Frito-Lay over Princeton Vanguard’s attempts to obtain a federal trademark registration for the mark PRETZEL CRISPS.  You know Pretzel Crisps — the thin, crunchy pretzel crackers that seem to go perfectly with any type of dip.  Well, the company that makes Pretzel Crisps, Princeton Vanguard, has filed several trademark applications for the mark PRETZEL CRISPS for pretzel crackers (and has disclaimed exclusivity with respect to the word “PRETZEL”).  It was even able to obtain one registration for the mark on the Supplemental Register.  Frito-Lay, which the Times describes as “the 800-pound gorilla of the snack food market owned by PepsiCo,” has opposed registration of the pending application for PRETZEL CRISPS and has petitioned to cancel the registration of the PRETZEL CRISPS mark on the grounds that the mark is merely descriptive of the goods and has not acquired the necessary distinctiveness needed to obtain trademark registration.  Frito-Lay, which sells pretzels under the trademark ROLD GOLD and owns the Stacy’s Pita Chips brand, further argues that the PRETZEL CRISPS mark is generic.  (Notably, Frito-Lay has a pending intent-to-use application for the mark STACY’S PITA CRISPS in which it has disclaimed exclusivity as to the words “PITA CRISPS” apart from the mark as a whole).

The Times article frames the issue as one of David (Princeton Vanguard) versus Goliath (Frito-Lay/PepsiCo).  This theme has been increasingly popular of late, and we have previously written on the issue of trademark bullying.  The article in the Times quotes Princeton Vanguard’s snack food entrepreneur as saying:  “This fight is about a big company that wants to dominate the snack food category by crushing a little company like ours rather than by competing with us.”  Aside from this issue, though, the story highlights the importance of selecting strong, protectable trademarks.  If you start with a mark that is descriptive, it can be more difficult to obtain and enforce trademark rights.   Continue Reading PRETZEL CRISPS: The Importance of Evaluating A Trademark’s Strength