Perhaps you have seen the TV commercials for fast-food restaurant chain Chick-fil-A during Saturday college football games: apparently semi-illiterate cows unveil banners urging consumers to “Eat Mor Chikin”[®]. A Vermont artist’s spoof of the restaurant’s trademarked phrase instructs people to munch on more of a leafier substance—kale. Bo Muller-Moore has printed the phrase “Eat More Kale” on merchandise such as apparel and bumper stickers (which have found their way onto Washington State cars), reportedly since 2000. He claims the phrase is meant to promote local agriculture (kale is a type of cabbage). His recent attempt to register “Eat More Kale” with the United States Patent & Trademark Office (USPTO), however, irked Georgia-based Chick-fil-A, which sent him a cease-and-desist letter claiming the marks are confusingly similar, according to press accounts.
Chick-fil-A appears to have an aggressive trademark-enforcement strategy. The letter reportedly alludes to the company’s many successful efforts to rebuff cooptation of the phrase (evidenced by the company’s activity before the Trademark Trial & Appeal Board (TTAB)). Muller-Moore apparently has enlisted the assistance of an IP professor to resist Chick-fil-A’s pressure to cease use of the similar mark. But is the law on Muller-Moore’s side? His case raises two interesting questions: (1) whether Muller-Moore can register the mark, and (2) whether Chick-fil-A can prevent him from using the phrase in commerce on products. Much of the resulting legal analysis probably turns on the likelihood that consumers would confuse the source of goods bearing the respective phrases. This kale conundrum also implicates the broader issue of parodies on products vis-à-vis trademark law.
Parodies of trademarked phrases are nothing new. Look no further than the countless variations on the California Milk Processor Board’s registered mark “Got Milk?” (e.g., “Got Red?,” “Got Nerve?”, “Got Snore?”, “Got Popcorn?”) to see that it is possible to register marks that appear to capitalize on recognition of another’s trademark. Chick-fil-A first registered the “Eat Mor Chikin’” mark in 1996, several years before Muller-Moore reportedly began printing T-shirts. Assuming an examining attorney approves publication of “Eat More Kale,” Chick-fil-A could oppose registration based on § 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), which prohibits registration of marks likely, “when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” To decide whether a mark is too confusing to allow registration, the USPTO takes into account the factors from In re E. I. DuPont DeNemours & Co., 476 F.2d 1357 (Fed. Cir. 1973), which include: the similarity of the marks in appearance, sound, and connotation; the nature of the goods or services with which the marks are used; the fame of the prior mark; and the extent of potential confusion. Muller-Moore would, of course, argue the potential for consumers attributing “Eat More Kale” merchandise to Chick-fil-A is small.
Suit to Enjoin Use
Even absent attempts by Muller-Moore to register the mark, Chick-fil-A could seek to enjoin use of the “Eat More Kale” phrase by arguing a likelihood of confusion. (The company also could claim dilution under 15 U.S.C. § 1125(c), if it can prove that the mark is “famous.”) In response, Muller-Moore might argue that the First Amendment protects his expression through parody. Which test a court would employ to judge the merits of Chick-fil-A’s consumer-confusion claims and Muller-Moore’s First Amendment arguments depends on the jurisdiction.
Note that Chick-fil-A, if claiming federal-question jurisdiction, could potentially file suit in a variety of district courts where a “substantial part” of the events giving rise to the claim (i.e. consumer confusion) occurred for purposes of venue. See 28 U.S.C. § 1391; Cottman Transmission Sys., Inc. v. Martino, 36 F.3d 291, 295 (3d Cir. 1994) (the focus of venue inquiry in a Lanham Act infringement case is ‘the location where the unauthorized passing off takes place-whether that occurs solely within one district or in many”). See generally 6 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 32:63 (4th ed.). Thus, Chick-fil-A might have the ability to choose a more favorable jurisdiction, as discussed below.
Federal courts apply a variety of multi-factor tests, including or similar to the test in In re E. I. DuPont DeNemours, supra, to assess likelihood of confusion. The strength of the earlier-registered mark generally plays a key role in whether courts hold that people would likely be confused about the source of the products bearing the marks. However, in the parody context, some federal courts “reason against very strong marks, especially famous ones; they reason that the public is likely to notice minor differences because the public knows the famous mark well; the humorous or parodic nature of the junior mark supports the inference that the public will recognize the differences.” 3A Louis Altman and Malla Pollack, Callmann on Unfair Competition, Trademarks & Monopolies§ 21:78 (4th ed.). According to one court, “when unauthorized use of another’s mark is part of a communicative message and not a source identifier, the First Amendment is implicated in opposition to the trademark right.” Yankee Pub. Inc. v. News Am. Pub. Inc., 809 F. Supp. 267, 276 (S.D.N.Y. 1992).
The “Eat More Kale” merchandise, rather than identifying Muller-Moore’s brand, seems to serve up such a “communicative message” about food choices, even though it is a product. See Ayres v. City of Chicago, 125 F.3d 1010, 1014 (7th Cir. 1997) (T-shirts “that the plaintiff sells carry an extensive written message of social advocacy” and “there is no question that the T-shirts are a medium of expression prima facie protected by the free-speech clause of the First Amendment and they do not lose their protection by being sold rather than given away.”). See also 6 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 31:152 (4th ed.).
However, even assuming the “Eat More Kale” merchandise, such as T-shirts, may be entitled to First Amendment protection, which test a federal court would apply to Muller-Moore’s potential First Amendment defense to trademark infringement would depend on the jurisdiction. Courts have applied at least three tests to expressive works in the trademark context: “(1) the ‘likelihood of confusion’ test [Tenth Circuit]; (b) the ‘alternative avenues’ test [Eighth Circuit]; and (c) the Rogers v. Grimaldi test [Second, Third, Fifth, Sixth, and Ninth circuits].” Parks v. LaFace Records, 329 F.3d 437, 447 (2003). The likelihood of confusion test assesses the First Amendment claim under the normal multi-factor test, whereas the alternative avenues test used by the Eighth Circuit (in which Chick-fil-A is headquartered) puts a heavier burden on defendants by requiring a showing that alternative means of expressing the artist’s message were not available. Under the Second Circuit’s test in Rogers v. Grimaldi, 875 F.2d 994, 999 (1989), the court has:
construed the Lanham [Trademark] Act narrowly when the unauthorized use of the trademark is for the purpose of a communicative message, rather than identification of product origin. Thus, where the unauthorized use of a trademark is for expressive purposes of comedy, parody, allusion, criticism, news reporting, and commentary, the law requires a balancing of the rights of the trademark owner against the interests of free speech.
809 F. Supp. at 276 (citing Rogers v. Grimaldi, 875 F.2d at 998) (emphasis added). According to the Rogers court, “the balance will normally not support application of the [Lanham] Act unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.” 875 F.2d at 999.
Muller-Moore could argue (probably persuasively) that there is “artistic relevance” to a parody of Chick-fil-A’s message because the restaurant chain represents a national, as opposed to local, food operation. As for the second prong of the Rogers test, confusion again enters the equation. The “finding of likelihood of confusion must be particularly compelling to outweigh the First Amendment interest recognized in Rogers.” Twin Peaks Productions, Inc. v. Publications Intern., Ltd., 996 F.2d 1366, 1370 (2d Cir. 1993). In this case, few people familiar with the Chick-fil-A brand (think fried chicken) are likely to mistake a bumper sticker telling them to “Eat More Kale” to be a message from Chick-fil-A promoting this leafy vegetable. The likelihood of confusion seems low. The ease of making out a free-speech defense clearly depends on the test employed; it would probably be more difficult for Muller-Moore to prevail in the Eighth Circuit than in the Second Circuit.
A Note on Parodies
A parody has been defined as “a ‘simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner.’” Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 464 F. Supp. 2d 495, 499 (E.D. Va. 2006), aff’d on other grounds, 507 F.3d 252 (4th Cir. 2007) (citing People for Ethical Treatment of Animals, 263 F.3d 359, 366 (4th Cir. 2001)). To be a parody, a mark “must ‘convey two simultaneous—and contradictory—messages: that it is the original, but also that it is not the original and is instead a parody.’” People for Ethical Treatment of Animals, 263 F.3d at 366 (citing Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ. Group, Inc., 886 F.2d 490, 494 (2d Cir.1989)).
In People for Ethical Treatment of Animals, for example, the animal-rights organization sued to stop the defendant’s use of the domain name “peta.org.” The court stated that there was “no suggestion of a parody” because the “domain name peta.org simply copies PETA’s Mark, conveying the message that it is related to PETA” without conveying the “second, contradictory message needed to establish a parody—a message that the domain name is not related to PETA, but that it is a parody of PETA.” 263 F.3d at 366. Here, in contrast, the “Eat More Kale” phrase arguably does have some expressive connotation.
Regardless of the merits of Chick-fil-A’s claim, it could be a costly legal fight for Muller-Moore to register and/or stave off any court challenges to use of the “Eat More Kale” phrase. Chick-fil-A’s enforcement strategy has worked in the past. For example, Chick-fil-A opposed registration of the mark “Eat More Chocolate!” After proceedings before the TTAB, the applicant withdrew its registration. In that case, Chick-fil-A pointed out that it sells desserts containing chocolate—perhaps a stronger case for barring registration than exists here (even though the company sells salads). Unless Chick-fil-A adds some kale to the menu, that is.