FWIW, you got lucky.

Cheers.

First, the fact remains that the spices used in KFC’s product fall under Class 30 and where the Smokey Chipotle(R) trademark is for Class 30 products (sauces, et al), defeats the dissimilar category Class for chicken (KFC is promoting a flavor seasoning for their chicken products). Proximity, likelihood of confusion, and marketing channels of goods are not relevant as to same Class products.

Second, strength of mark is not accurately addressed for marks that have not achieved incontestable status. The Smokey Chipotle(R) trademark is incontestable in the United States according to federal law. Any mark on the principal register that has not been challenged within 5 years after issuance is determined to be incontestable.

This means that the mark can ONLY be challenged as to generic use.

A descriptive use challenge is not a permissible/legitimate legal counterclaim in a trademark infringement challenge. This fact is established in federal case law.

As an aside, this trademark has been around for nearly 15 years.

The fact remains that the only legal challenge that can be made for generic use fails where it is the spice itself, i.e., “chipotle”, that is already disclaimed on the trademark registration. No one orders smok(e)y chipotle, the spice is chipotle, therefore, the reason for disclaiming the generic word “chipotle”.

The USPTO recognized this when the application was made in 1993, the first trademark request incorporating the word chipotle in the United States. Because the spice was a generic name (similar to Tabasco-although Tabasco was grandfathered in in the early 1900s under the Lanham Act), the use of a phrase that was suggestive (remember at the time the word chipotle was not even in the vocabulary in the U.S. and the general public had no clue what a chipotle even was -and neither did many in the fiery foods industry as well- however, since it was a processed spice (in Mexico), because of its generic use it ws disclaimed in the trademark registration. This was not negotiable with the USPTO.

Third, the reason Chipotle Restaurant is a permitted mark is the fact that it is a service mark for restaurants and the name of a restaurant would NOT confuse consumers with Class 30 products.

Fourth…in 2006, Kraft Foods in conjunction with a company called Urban Accents made a legal challenge to the United States Trademark Trial and Appeals Board challenging “generic” use of the Smokey Chipotle(R) trademark. After more than 2 years of legal filings in the cancellation proceeding….they (properly)lost and Chuck’s trademark remains, and will remain, incontestable. This challenge essentially eliminates anyone’s all future challenges to cancel this mark.

This binding legal challenge further supports the validity and incontestability of the Smokey Chipotle(R) trademark. Spelling variations are NOT relevant where they are similar or confusingly similar.

Chuck Evans was also granted a trademark in 2008 for Smokin’ Chipotle(R). This trademark application was challenged upon publication by Kraft Foods-after a year and a half of legal filings and pleadings by both sides, Kraft Foods lost again!

The result of an infringing trademark violation is not winning a trademark infringement violation-Chuck has won several legal challenges (losing -0-)and has settled nearly 75 infringements-many are agreements to merely cease and desist.

The real issue is PROVING damages. This is nearly impossible, even for major corporations-thus the reason for nearly all cases to settle prior to trial.

FYI:

KFC settled. Others mentioned above have settled and as to Tabasco Chipotle Sauce-where do you think they got the idea to make a Chipotle sauce? There is existing evidence that the McIlhenny Company was notified by certified mail (return receipt signed) of Chuck’s Smokey Chipotle(R) products, book, and marketing suggestions several years BEFORE their product made it into the marketplace.

Finally, only those listed on the montezumabrand.com Trademark Violator’s list have not settled accordingly (failed to honor the cease and desist request) although many have discontinued the infringing products.

The bottom line is that trademarks are valuable property rights and are only valid if protected. A trademark becomes diluted (and essentially worthless) and eventually invalid if not aggressively enforced.

The complaint is that KFC’s “Smoky Chipotle” infringes upon Montezuma’s trademarked “Smokey Chipotle”.

Interestingly, when one searches the term smokey chipotle, Montezuma’s mark comes up first, but it doesn’t appear again until the second page. So the question that comes to my mind, does Montezuma really even own the brand? And if it isn’t obvious to me that they own the brand, what makes me think a judge is going to declare KFC as having infringed upon Montezuma’s mark.

In fact and in law, here is what will be looked at when determining whether or not there IS infringement.

Firstly there is not direct infringment, it is a non-identical infringement at best. The are spelled differently.

The second is that since they are similar, is there a possibility that there will could be a confusion in the eyes of consumers that KFC’s product originated from the original trademark owner?

The mark confusion test announced by the Ninth Circuit Court of Appeals in AMF, Inc v Sleekcraft Boats, 599 F.2d 341 (C.A.9) 1979 offered eight specific elements:

1. Strength of the mark

No offense to Montezuma who is relatively well known in these hallowed pages, but I doubt that the majority of consumerdom has any idea that Montezuma even exists. KFC has sales in 2008 of give or take a round $200 million. Montezuma had sales in 2008 of oh… Let’s be generous and say $500,000. No insult intended, Chuck if your sales are well in excess of this.

I’d have to go out on a limb and suggest that the David and Goliath story is about the only thing that might bear brand confusion out.

2. Proximity of the goods — Montezuma brands is competing in the same markets as KFC, albeit I’d suggest KFC might win on the International end.

3. Similarity of the marks — They’re not really similar at all. One is a chicken food product, the other is a salsa.

4. Evidence of actual confusion — They’ll look for that. I’ve not seen any.

5. Marketing channels used One has a chain of restaurants, the other is selling through specialty food stores. There is no confusion over marketing channels.

6. Type of goods and the degree of care likely to be exercised by the purchaser — One is a fast food product, the other is a salsa. The purchaser is pretty sure which one or the other they are purchasing.

7. Defendant’s intent in selecting the mark — Since KFC would be the defendent, and since the only reason I’ve ever heard of Montezuma is through this blog and the industry players, I doubt KFC has any idea that Montezuma exists therefore there was no intent to use Montezuma’s brand equity to further their sales.

8. Likelihood of expansion of the product lines — Frankly, I think that there isn’t very far that KFC is going to go with the product, they’re not about to branch out into making smoky chipotle salsa, never mind a “smokey chipotle salsa”.

For what it is worth, and granted my worth is based on Canadian trademark laws, which may govern themselves ever so slightly differently, I doubt that Montezuma has a case of infringement against KFC.

Among the list of other so-called “infringers” on Montezuma’s website though, there are likely to be one or two newcomers to the market who could be on the losing end of an infringement order, but they’d have to be making a competing product being sold through the same channels as Montezuma.

Please note that although the US “Patents and Trademarks office” issues the patents and trademarks, what Montezuma holds is not a patent, it is a trademark and they are not the same thing at all.

If you’re paying 2% royalties for the suits that are brought to your attention, Chuck, I’ve a list that you can send cease and decist letters to.

By the way, if you want to get a jump on KFC, here in Canada, nobody as yet has registered either “smoky” or “smokey” chipotle. Which, btw, I would contest on the grounds that when someone asks me for a “chipotle” sauce, the word chipotle is very often preceded by the word “smoky” making it “common use” here in Canada.

I’m curious to see how this plays out, but, bottom line, I doubt that Montezuma has a leg to stand on. On the other hand, Chuck, if you want to go after brand infringement you could win… Check out Tabasco’s ads: http://tabasco.com/tabasco_tent/usage_tips/chipotle_pepper_sauce_sprinkle.cfm They’re in the industry so they might have heard of you and might have gotten the idea to make a smoky pepper sauce from Montezuma. Of course their annual sales are $250 million a year and they’ve been at it for nearly 200 years, so what were they chances they’d come up with a smoky chipotle sauce all on their own?

Now THAT is a David and Goliath story worth watching.