The Colonel Surrenders
David Weigel | May 10, 2007, 2:24pm
The annals of ridiculous intellectual property lawsuits
are a little thinner today.An American fast food giant has backed down in a row with a North Yorkshire country inn amid claims the pub is using one of its trademark phrases. The Tan Hill Inn, the highest pub in England, had been told by Kentucky Fried Chicken to remove the words "family feast" from its menu.
KFC's lawyers said the company owned the copyright to the wording.
But hours later the American firm's lawyers decided not to pursue the issue of the pub's meal description.
Something to consider if you're ever tempted to describe your last repast as finger-lickin'.
Dave W. | May 10, 2007, 3:08pm | #
oh, yeah, I also wrote about this kind of case this morning at another board. here is the cross-post:
I used to write these kind of letters when I did trademark litigation. Here is how it works, at least in the US:
1. Chain Restaurants Tweedle-Dee and Tweedle-Dum are competitors and have lots of money.
2. Chain Restaurant Tweedle-Dee gets some dumb trademark like "Family Feast" (I don't think that all trademarks are dumb, but it is the dumb ones that cause most of the problems).
3. Having no ideas of its own, Competitor Chain Tweedle-Dum then decides to do an advertising blitz using the phrase "Family Food Feast."
4. Of course, at this point Tweedle-Dee sues Tweedle-Dum for trademark infringement (and dilution and unfair competition and copyright infringement and trade libel and a whole host of other causes).
5. Instead of just changing its ripped-off slogan, Tweedle-Dum decides to fight the lawsuit. Their lawyers advise them that one way to defend is if some other restaurant was using "Family Feast" before Tweedle-Dee's trademark application. Their lawyers further advise them that another way to defend is if Tweedle-Dee has not been enforcing its trademark against other restaurants, no matter how small or non-competitive, who used the slogan after Tweedle-Dee filed its trademark application.
6. After reflecting on these defenses, Tweedle-Dum instructs its lawyers to find every restaurant that used or uses the "Family Feast" slogan either before or after Tweedle-Dee filed its trademark application. All these restaurants can help Tweedle-Dum establish its legal defenses per point 5. The more of them there are, the better defenses Tweedle-Dum will have.
7. So, Tweedle-Dum's lawyers search low and high for other restaurants using the slogan. They search higher than the crows fly because they are paid by the tenth of an hour for the search. They find quite a few restaurants using the slogan because people, especially restauranteurs, are pathetically uncreative with their slogans and they are tend to converge on a few dumb phrases and names.
8. Tweedle-Dum's lawyers then take the list of "infringing" restaurants and writes up a legal brief, defending against Tweedle-Dee's legal claims.
9. Once Tweedle-Dee gets a copy of the brief they immediately have their lawyers send threatening letters to everybody on the list, no matter how small. Tweedle-Dee hopes that all the restaurants on the list started using the phrase "Family Feast" after their trademark application was filed, but often there is no way of knowing for sure. As you may have figured out, the reason Tweedle-Dee has its lawyers do this is so that they can come back to court and show the court that they are enforcing their trademark promptly upon finding out about each and every infringement, no matter how small or inconsequential. Tweedle-Dee hopes that this will impress the court to the extent that the court will not think Tweedle-Dee has been "sleeping on its trademark rights" and sending out the signal to the world that its trademark is abandoned by the disuse of non-enforcement.
10. The smaller restaurants on the list, like the "Tan Hill Inn" in this story then receive the threatening letters. Sadly, it often means that they have to change their slogan, and maybe even buy a new banner from the local print shop. Happily, the small restaurant can often take the story to the local media and get a little "news" story printed up, which news story casts the small restaurant in a sympathetic light.
11. After the news story, the small restaurant notices a burst of increased business, which, in turn, increases profit. Maybe not much, but usually enough to offset the cost of thinking of a new slogan and purchasing a new banner from the local printshop. (banners are not that expensive, and thinking of dumb new slogans even less so)
12. Meanwhile, back at the Tweedle-Dee versus Tweedle-Dum trademark lawsuit, the judge's clerk gets around to reading all the briefs. Chances are, the clerk thinks the stuff about the small restaurants "infringing" is silly because those restaurants are economically inconsequential compared to the Tweedle-Dee chain and the Tweedle-Dum chain. So, all that work and all those arguments are ignored, and the case is decided on more sensible grounds -- usually by amicable settlement between Tweedle-Dee and Tweedle-Dum. These settlements tend to happen once the first couple rounds of legal bills come in to the accounting departments of the respective chains.
My comment: yes, it is quite surreal, SnoweyUK.
Dave W. | May 10, 2007, 4:09pm | #
Dave W.: I didn't see the "generic" defense, i.e., "family feast" is generic for a restaurant promotion where families get together and feast.
Well, I must re-iterate that I don't know anything about UK trademark law. But, some further comments:
DISTINCTIVE CHARACTER
However, in the US you can make the "genericness" defense (phrase doesn't function as a trademark, even without other businesses using it. In fact, in the US, I am not even sure that trademark-type use by third parties is helpful to establish "genericness" because if the third party
businesses are using the phrase as one would use a trademark (eg, on a big banner in big letters) then that would seem to argue that that third party believed the words were something other than generic. For example, on the McDonald's sign, the word "McDonald's" appears in a considerably larger font than "hamburgers." Ultimately, I don't think third party business use is considered probative of either genericness or distinctiveness.
Moving to the merits on the "distinctive character" issue, as you may know, the US has five categories: (1) fanciful / inherently distinctive ; (2) arbitrary trademark; (3) suggestive; (4) descriptive; and (5) generic. Above, I called the trademark here "dumb" because it is either "descriptive" or "generic," and is therefore, under US law it would be invalid (at worst) or exceedingly weak (at best). Perhaps the reason they allow generic and borderline generic registrations in the UK is that they know that the generic and borderline generic marks are not going to provide much leverage in commerce as a practical matter. This case, and its speedy, favorable (to the little guy) resolution may indeed be a good example of that dynamic in action.
OTHER DEFENSES
Rather, I was thinking that subsequent use by third party businesses was being used (or was of concern to forward-thinking KFC counsel) because of trademark abandonment and/or prior use. Now, assuming they had an actual registration here, I am not sure how much concern there would be about abandonment. I don't know how contestable, or on what grounds, a trademark registration is in the UK. So trademark abandonment may or may not have been a real, potential concern here.
Most likely what was going on here is that KFC was concerned about prior use, and wanted to quietly scare prior users into abandoning. My guess is that prior use can cause problems in the UK, even for a registered trademark. However, if the prior use quietly disappears, without a trace in tangible media, before any "real" litigation starts, then the prior use is not a problem.
