KFC Accused of Trademark Infringement.

It has the potential to be a modern day tale of David and Goliath, if not for the fact that David was a hero with the best interests of his people at hand; perhaps more of a Jack and the beanstalk? In any event it is about a giant and a pipsqueak and it plays out like this.

Kentucky Fried chicken enters the market with their Original Recipe in 1940. It was not until 1974 when they toyed with the idea of a new formula and Extra Crispy was introduced. Now more than two decades later The Colonel has introduces an exciting new flavor in their Smoky Chipotle Crispy Chicken. Interestingly, KFC has decided to roll out this flavor for a limited time only despite the public’s craving for spicy chicken.

Yum! Brands in Louisville, KY; the world’s largest purveyor of fried chicken is the owner of the KFC brand with 14,000 locations in fifty states and ninety-eight countries.

Enter one Chuck Evans; in 1993 Chuck filed for a trademark for the descriptive term “Smokey Chipotle” for use as applied to sauces and condiments. The assigned examining attorney reviewed his application and in March of 1994 he was refused the registration of this trademark for the following reason:

RE: Serial Number 74/454518
The assigned examining attorney has reviewed the referenced application and determined the following.
The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Brealçfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP section 1209.01(b).

In this case, the applicant’s specimens clearly explain that the main ingredient of the applicant’s hot sauce is CHIPOTLE chile peppers which are SMOKEY in flavor because the peppers themselves have been smoked. The words in the applicant’s mark merely describe the goods’ flavor and ingredients.

A response was filed by Chuck Evans’ council where he claims to have had uncontested exclusivity to the term “Smokey Chipotle” for at least five years and he furthermore amended the wording in the indemnification from “condiments” to specifically hot pepper sauces and salsas and no exclusivity to the word Chipotle is afforded. In October the trademark was published in the Official Gazette and apparently no opposition was filed in respect to this publication. Hmmm, I never got my issue of the Official Gazette that week? In Jan of 1995 Mr. Chuck Evans was awarded a trademark for the descriptive term “Smokey Chipotle” to be used as described in the manner above.

Since this historic day where a trademark was knowingly issued against a descriptive term despite the laws stated above that prohibit a trademark to be issued against a descriptive term Mr. Evans has laid out a full-on financial assault on many a small business owner. It is actually a running joke among people in the fiery food industry that Chuck makes more money terrorizing small businesses out of Smokey Chipotle bucks than he makes hocking his Smokey Chipotle wares. You could normally find a page on his website that details all the potential victims of his “cease and desist” letters who would not pay the ransom, however it seems the site has fallen victim to at least 4 Trojans and Google’s Diagnostic services has shut off access through their search engine.

On June 15^th through the blogger named Passow, Chuck has declared his intentions to move against the Fried Chicken giant KFC. Chuck is quoted as saying “I knew about this the day the 1st commercials aired since I was watching/listening to the television while cooking Smokey Chipotle salsa-true story.” “Yum! Brands, has totally diluted my trademark with a national/international advertising campaign to the point that the general public will forever associate “smoky chipotle” with KFC just due to sheer advertising muscle (2 spots air on all stations, including cable, seemingly all the time).” Passow goes on to say that Yum! Brands did not respond to an email request for comments.

Now, I’m not a lawyer, but in looking over the United States Trade &Patent Office paperwork I noticed that Chuck’s “trademark” is approved for use as applied to specifically hot pepper sauces and salsas, neither of those being fried chicken. Perhaps if KFC decides to make a hot pepper sauce or salsa they will be sure to avoid that term. Furthermore, the criterion for addressing a trademark infringement is described as being “confusingly similar”. Since Chuck has never held a trademark in the fried chicken business and his products have less than national recognition I would think that the confusion has been avoided.

I would love hear comments from those of you with trademark law knowledge, Consumers, and those of you who would just like to leave a comment.