Chuck Evans of Montezuma Brand passed along this breaking news to us about his ongoing efforts to protect his trademarked “Smokey Chipotle” from being pilfered by a number of other organizations in the industry. Score yet another victory for Chuck! Way to go!!!

Chuck Evans’ SMOKEY CHIPOTLE(R) Trademark Upheld in Trademark Dispute

In a recent decision filed in December 2007, the United States Trademark and Trial Appeals Board upheld Chuck Evans’ SMOKEY CHIPOTLE(R) trademark; the first trademark utilizing “chipotle” in the United States. A petition to cancel Mr. Evans’ recognized trademark was filed by Chicago-based, Urban Accents, Inc. Patton Boggs, LLP, a Washington, D.C. law firm specializing in intellectual property rights litigation represented Urban Accents, Inc. In addition, Kraft Foods, North America, the world’s largest food manufacturer, by and through their global trademark senior counsel, supported Urban Accents efforts for cancellation, resulting in a nearly 2-year legal process. Mr. Evans represented his interests in the cancellation proceeding. SMOKEY CHIPOTLE(R) has been registered since 1995.

While Mr. Evans’ trademark had achieved incontestable status under the Lanham Act; incontestable trademarks are subject to cancellation only if the trademark is used generically in the category for which the trademark is registered. The Trademark and Appeals Board agreed with Mr. Evans’ argument that the phrase, Smokey Chipotle, was descriptive of Chuck Evans’ MONTEZUMA Brand products and not a generic term used in the prepared foods category.

Where the petition for cancellation was dismissed with prejudice, the Trademark Trial and Appeals Board decision establishes legal precedent in future challenges.

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