Fried Chicken Trademark Fight

With everything else there is to worry about in this world, you would think people could avoid fighting over who owns the right to use the name of a famous president as a trademark for fried chicken restaurants. But you would be wrong. As reported in the New York Times, there is a battle going on for the KENNEDY mark in connection with fried chicken restaurants -- http://www.nytimes.com/2011/02/14/nyregion/14chicken.html?_r=1&scp=1&sq=kennedy%20fried%20chicken&st=cse
Mr. Abdul Haye owns the registered mark KENNEDY FRIED CHICKEN, Reg. No. 2994240, for restaurant services. The registration issued September 13, 2005, which means it is now in the filing period for the declaration of continued use. According to the New York Times article, the KENNEDY fried chicken brand "has spawned hundreds of imitators." The article states that Mr. Haye is sending out hundreds of letters to other parties who are using the KENNEDY name demanding they pay him a monthly franchise fee. There are a few problems that Mr. Haye should be aware of here.
First, supposing some of the recipients of the letters are willing to comply, there will need to be some mechanism put into place to ensure that the owner of the trademark exercises adequate supervision over the nature and quality of the services - otherwise there could be a naked licensing issue.
Second, it seems that some of the letter recipients may assert the defense of laches - one has to wonder if Mr. Haye may have waited to long to assert his rights.
Third, as the NYT article indicates he is sending the letters "to Kennedy outlets across the country," it would seem that some of the other users of the name may claim they have common law priority in their market area, while others may claim that there is no likelihood of confusion because Mr. Haye does not operate in their locality and has no present plans to begin operations there.
Long story short, although Mr. Haye enjoys the benefits of a federal registration and the legal presumptions that go with it, he may have a hard time if he has to go to court against some of the other KENNEDY outlets. If he really is sending out hundreds letters he may be biting off more than he can chew (sorry). Let's hope that Mr. Haye is aware of the necessity to file maintenance documents with the USPTO between the 5th and 6th anniversary of his registration date - otherwise he may miss the deadline to file his section 8 declaration and lose his registration.

The Gift that Keeps on Giving

It has come to my attention that Sarah Palin has filed an application with the USPTO to register SARAH PALIN as a service mark for "Information about political elections; Providing a website featuring information about political issues" in class 35 and "Educational and entertainment services, namely, providing motivational speaking services in the field of politics, culture, business and values" in class 41. As of this writing there is an office action outstanding in which the trademark examining attorney has noted that the class 35 specimens are unacceptable because they do not show use of the applied-for mark in connection with any of the services specified in the application. According to the office action "the specimen submitted for 'Information about political elections' is a news story on the Fox® Network about Ms. Palin" and the specimens submitted for "Providing a website featuring information about political issues" are postings on Facebook®. Thus, "the specimen does not show use of the mark as 'providing a website featuring…'. Rather the proposed mark merely appears as a posting name." Judging by these specimens, it seems that Palin or her attorney may not completely understand what constitutes use of a word or symbol as a trademark.
An application to register BRISTOL PALIN has also been filed, for "Educational and entertainment services, namely, providing motivational speaking services in the field of life choices" in class 41. The "field of life choices?" An interesting field - the USPTO may require some clarification on that. There is also an office action outstanding against this application because the specimen does not show the applied-for mark in actual use in commerce. People generally just do not understand the specimen submission component of the trademark application. Palin and her daughter have a lot of company in stumbling over this requirement. Although both these applications have been initially refused for failure to provide an acceptable specimen, the Palins' attorney should be able to overcome the refusals.
A small thank you is due to John McCain for bequeathing to the American people this gift that keeps on giving. I have my doubts that Palin provides any "educational services." But she does provide "entertainment services."