Letters of Protest: A Tool To Avoid The "Trademark Bully" Label

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