Kale, Kickstarter, and my lawsuit against the USPTO
By James Lantz, Burlington, VT, May 23, 2017 (updated March 31, 2018)
Last week I filed a lawsuit against the United States Patent and Trademark Office (USPTO) to get access to some of its secrets. This was on behalf of our documentary that was funded on Kickstarter.
I’ve never sued the government before. In fact, I’ve never sued anybody.
I’m the Vermont filmmaker making a documentary about the Eat More Kale vs. Eat Mor Chikin trademark conflict. I filed the lawsuit to gain information that the government withheld from our film in violation of several Freedom of Information Act (FOIA) requests that I filed through last year.
The Eat More Kale case, which began in 2011, centered around a trademark application that Vermont T-shirt artist Bo Muller-Moore filed at the USPTO for his Eat More Kale T-shirt design. In response to Bo’s application, Chick-fil-A, the Atlanta-based fast food chicken chain, sent Bo a cease and desist letter informing him that his Eat More Kale design was infringing on their trademarked Eat Mor Chikin slogan.
Bo — a pony-tailed, forty-something T-shirt artist who has described himself as looking like a hobbit or a hippy — said that when he first looked at Chick-fil-A’s cease and desist letter he couldn’t believe it. “They feel like they own the words, Eat and More,” Bo said. “And the thing is, the word “Mor” isn’t even spelled correctly.”
To me and lots of other folks, the company’s legal demands sounded like nonsense. The nearest Chick-fil-A was in a neighboring state, and was a multi-billion-dollar company owned by one of the richest men in America.
Bo printed T-shirts, one at a time, in the attic above his garage.
“The idea that you can’t use Eat More Kale on a T-shirt because somebody else has registered Eat Mor Chikin, is crazy,” said Stanford Law Professor Mark Lemley.
Nevertheless, what followed was a story that stretched four years, involved over a hundred thousand people, a senator, a governor, lots of T-shirts, and a little known strategy that corporations use to abuse small businesses, artists, and activists — a legal tactic known as Trademark Bullying.
Oddly, what the story didn’t involve so much, was Chick-fil-A.
“A TIDAL WAVE OF ANGER”
In 2011, not long after they sent Bo their cease and desist letter and a similar letter to the USPTO, Chick-fil-A all but disappeared from the Eat More Kale trademark story. From 2012, 2013, 2014 to 2015, Chick-fil-A did nothing to Bo. They filed no lawsuits or injunctions, and Bo would not hear from them again.
Instead, it was the USPTO that stepped in, and, along with Bo’s pro bono legal team headed up by the University of New Hampshire Transaction and Intellectual Property Clinic, took a substantial role in the unresolved Eat More Kale case. Together these two institutions would engage in a slow motion volley of the Eat More Kale trademark application, back and forth, that would stretch into years an administrative process that normally takes months.
The FOIA request I sent to the USPTO was an effort to understand why this was happening.
The FOIA yielded nearly a hundred emails relating to the Eat More Kale case. And even though many of the emails came back with huge blocks of white redacting most everything in the email, what wasn’t redacted revealed a government agency scrambling to react to a national trademark story in which the USPTO was playing a significant role. It was a response that went all the way to the top of the USPTO, to the then-Commissioner of Trademarks, Deborah Cohn.
At the time, the Eat More Kale trademark story was the most publicized trademark bullying case to date. Having gone viral on social media it garnered reports from many of the nation’s largest news outlets, including FOX News and NPR. CNN’s Anderson Cooper addressed Bo directly and told him to “Keep fighting the good fight, T-shirt guy.”
Petitions were started, rock radio stations called, lawyers offered to work for Bo for free. In one day, Bo got 37,000 emails.
“It was a tidal wave of anger,” that was directed at Chick-fil-A, Bo said. “Everybody was pissed off.”
At a Vermont farm show, a man in a straw hat was incredulous, “Who do they think they are!?” Nearby, a woman just glared, “It’s un-American.”
On the Eat More Kale Facebook page, hundreds of supporters weighed in, “So greedy,” “Insane,” “Unbelievable!” “People in the U.S are sick and tired of corporations screwing over the little guy.”
Even on Chick-fil-A’s Facebook page they were indignant, “People can’t own words. America has lost its moral compass.”
The USPTO was clearly sensitive to the support and media attention Bo was getting from all over the country. In internal emails they sent around quotes from the New York Times, the Wall Street Journal and a Forbes Magazine article that said shaming Chick-fil-A had “resulted in thousands of dollars of financial support” for Bo.
But most importantly, the emails reveal that Bo’s trademark application was flagged by the USPTO for special attention. In a 2011 email, USPTO Managing Attorney Andrew Lawrence told his colleagues that he had taken over the Eat More Kale case, “…to make certain it doesn’t move.”
And one thing’s for certain: Bo’s trademark application did not move.
Once, the USPTO sat on the Eat More Kale application for so long with no action that a prominent trademark lawyer publicly questioned whether the USPTO itself was acting like a trademark bully.
The USPTO has been guilty of stalling applications before. Until they were recently sued to stop the practice, the government had a secret system to intentionally hold up patent applications they deemed were “controversial” — including those that “would potentially generate unwanted media coverage” for the USPTO.
In the last forty to fifty years, trademark laws have expanded greatly — so much so that Stanford University law Professor Mark Lemley told me, “The system is out of control.”
According to numerous legal scholars I interviewed, what happened is that large trademark owners, in an alliance with Congress, coopted a good law that is profoundly important to commerce, expanded it, then put it in service to do things trademark law was never meant to do.
The changes in the law mean that larger corporations can unfairly take things away from small businesses, like market share and website domains. It also gives them the ability to chill and prevent competition, censure free speech, and even claim ownership of common everyday words, as Chick-fil-A attempted to do to Bo.
“Small businesses are the ones hurt by this because they can’t afford to find a good lawyer, they can’t afford to pay that lawyer hundreds of thousands of dollars to litigate their case,” said Professor Lemley, “and there’s very little they can do about it.”
The expanded law is so profoundly unfair that most small businesses, artists and activists have essentially lost their right to go to court.
When the foreign-owned Nestle’ corporation attacked a small Ohio pizza pocket maker over the word “pocket,” the family lost nearly everything in the eight-year legal battle. “We were a piss-ant compared to them,” the owner told me. “They took everything but our integrity.”
According to a 2015 report from the American Intellectual Property Law Association, a small business is looking at a potential cost between several hundred thousand to over two million dollars when hit with a trademark infringement lawsuit.
Not to mention the time, psychological costs, and shame that goes with fighting a lawsuit, it’s no wonder that when faced with the decision of whether to fight or fold, most small businesses fold because the economic deck is stacked against them.
In my research for our documentary, I filmed in over fourteen different states and located scores of small businesses and families devastated by unreasonable claims of trademark infringement. I interviewed many of them. Trademark bullying is a real, measurable legal phenomenon.
Many of the legal scholars I interviewed said the expansions in the law that allow trademark bullying to happen are in many ways a product of inequality.
“It fits in with the whole general trend of American capitalism at the moment. It’s 1% of brands who benefit,” said Professor Barton Beebe at NYU School of Law, “and the other 99% can pick up the pieces here and there or they can just go away.”
At Notre Dame Law School, Professor Mark McKenna said the problem was the dominance of law by money. “You can’t create a legal system that tries to freeze an economic order,” he said, “that doesn’t allow small businesses to compete.”
Georgetown Law Professor Rebecca Tushnet was more blunt. “It doesn’t pay to be small,” she said.
In Burnsville, Minnesota I interviewed Micky Mariette at the consignment furniture store that she and her husband had owned for thirty years, called Touch of Home Furnishings.
Surrounded by a careful display of not-quite-antiques, ceramic angels, framed ducks, and a water-stained atlas from Time-Life books, she told me how she and her husband were being sued for their use of the words, “Touch of…”
After becoming aware of other cases of trademark bullying not far from where they lived, Micky asked, “Where does this leave our small towns? Our small businesses? I mean, if they can come after me and I’m nothing — nobody’s safe.”
“TIMING OF PROGRESS”
Just before Christmas 2014, Bo and then-Governor of Vermont Peter Shumlin held a press conference on the Vermont statehouse steps.
“I’m proud to announce that as of December 9th, I’ve been granted a trademark for my design, Eat More Kale,” Bo told a small, cheering crowd.
Standing next to Bo, Governor Shumlin said that it was “…an extraordinary victory,” and added, “this is a huge moment.”
Even though the moment was eight months premature (the USPTO didn’t actually issue a registered trademark for Eat More Kale until August 2015) the news would be written about in places like Time Magazine, the Atlantic, and the Washington Post.
The headline in the Post read, “Eat More Kale guy wins Trademark battle with Chick-fil-A. Vermont rejoices, naturally.”
Afterwards, Bo encouraged his fans to buy a T-shirt. “Consider SUPPORTING ME AND MY VICTORY OVER CHICK-FIL-A,” he posted on Facebook.
Even Chick-fil-A got into the celebration, putting out a press release that said, “Cows love kale, too.”
Later that following summer, the USPTO issued registered trademark #4,795,440 for Eat More Kale.
Finally, the story was over.
The image of a small business person standing up to a billion-dollar corporation makes for a seductive story. It’s the story that fueled our documentary’s funding on Kickstarter, and sustained many an Eat More Kale supporter through the slow economy that followed the Great Recession.
Back in 2011, it was admirable of Bo to stand up to Chick-fil-A’s unreasonable cease and desist letter and to do so in a public way. He planned protests, talked with activists and said he wanted to “shine a light on [Chick-fil-A’s] shenanigans.”
Bo said, “I want to be the guy who stands up to them and says, ‘I’m not taking your bullshit. I’m not going to back down just because you say I should.’”
Lots of people cheered that sentiment. And for a while, this was our documentary’s story.
But as it dragged on and on for four years, the Eat More Kale vs. Chick-fil-A story was diminished. With the single exception of Facebook, any activism, planned protests or shining of light, just seemed to vanish.
Contrary to what one Eat More Kale Facebook supporter called it, it hadn’t been an “epic battle” between Chick-fil-A and Bo. Nor was it what Bo said on the day of the statehouse press conference: “…a legal wrestling match with the fast food giant, Chick-fil-A…”
For one thing, Chick-fil-A itself was absent for nearly all of those four years.
But also, evidence suggests the USPTO wasn’t alone in its efforts to slow down the Eat More Kale trademark application. Conversations with Bo, his legal team’s sluggish filings at the USPTO, and a letter written to Bo by one of his UNH lawyers, indicate that Bo and his legal team were also affecting the timing of progress on the Eat More Kale trademark application.
A March 31, 2014 letter to Bo from his UNH lawyer requests permission to advance the Eat More Kale trademark application in a face to face meeting with the USPTO examining attorney. In the letter, the UNH lawyer tells Bo, “I know you have other considerations with regard to the timing of progress on this application.” [italics mine]
The “timing of progress” of the Eat More Kale trademark application — and, specifically, its slow progress — is at the crux of our documentary and my FOIA lawsuit at the USPTO.
When asked about the letter and the appearance of slowing down the Eat More Kale trademark application, Ashlyn Lembree, Bo’s UNH pro bono lawyer, declined to comment, citing attorney-client privilege.
Daniel Richardson, Bo’s Vermont pro bono lawyer, said that Bo’s legal team wasn’t purposefully dragging its feet but rather for strategic reasons “embraced the delay” caused by the USPTO.
Regarding the timing of progress letter, Bo said he didn’t know what his lawyers were referring to.
“WHAT ELSE COULD I DO?”
Bo insisted that he had nothing to do with the timing of his trademark application.
In a 2013 interview he said he wasn’t “actively rooting for the trademark office to take their time” but rather was playing the cards that were dealt him. “And I’m being dealt slow motion,” Bo said. “So in that slow motion, I’m gonna beat the drums and I’m gonna be a squeaky wheel. I’m gonna do the best to sell more T-shirts.”
However, Bo appears to have at least lent his support to the slow progress of his application at the federal level.
Responding to questions via email, Bo recently said that while his trademark application was pending at the USPTO, he had sent a note to USPTO Managing Attorney Andrew Lawrence telling Mr. Lawrence that “…he could take as long as he wants” on the Eat More Kale trademark application.
Bo framed his note to Mr. Lawrence as a “sassy” email to remind the managing attorney overseeing his case that a lot of people were watching the Eat More Kale story.
Nevertheless, Bo is now in the awkward position of defending his monetizing of the federal trademark application process when it appears that he and his lawyers were at least partially responsible for the length of time that process took — a process that Bo often conflated with a years-long legal battle with Chick-fil-A that was, for the most part, non-existent.
Bo’s use of that time was profitable.
During the four years his story played out, according to Bo, his gross sales of Eat More Kale shirts topped a million dollars — most of it due to publicity he generated on social media surrounding Chick-fil-A.
On the Eat More Kale website, and in hundreds of posts to his 20,000 Facebook fans, Bo’s drumbeat against Chick-fil-A lasted years after receiving their cease and desist letter — even as he said he knew the letter had “no teeth behind it.”
In an interview a year and a half after news of Chick-fil-A’s letter broke nationally, Bo said, “I was told to cease and desist but that letter doesn’t mean shit without a judge’s order.”
Even still, on his website and in scores of social media posts, Bo often told a different story as he pushed the limits of hyperbole, inflated his conflict, and implied a bigger legal fight with the chicken chain than what really existed.
A year after the cease and desist letter: “Chick-fil-A is still actively trying to SHUT MY BUSINESS DOWN!”
Two years afterward: “…embattled in a Federal trademark battle with Chick-fil-A,” “Teams of lawyers are still battling it out”
Two plus years: “Chick-fil-A has NOT backed down from their CEASE and DESIST demand,” “I’m in a “battle” with the Billionaires at Chick-fil-A”.
Three plus years: “Through corporate bullying me and my family’s life might be seriously affected if I am not given the opportunity to fight this lawsuit… Donate to help defend me and my family.”
In a 2015 follow-up interview, Georgetown Law Professor Rebecca Tushnet told me the level of publicity Bo generated to get his trademark was “overkill.”
Meanwhile, Bo was aware that his fans were funneling their anger at Chick-fil-A into purchases of Eat More Kale T-shirts. People were so pissed at Chick-fil-A, Bo said, “they wanted to shop with me to essentially give Chick-fil-A the finger.”
“F*ck Chick-fil-A,” said one Facebook fan. “I’m going to buy a shirt!”
“Buying my 3rd shirt,” posted another. “I’d buy 100 if I could. Keep fighting!”
In a 2012 interview, Bo said of Chick-fil-A, “If they’re gonna actively fight to shut my business down, in the meantime, if people are compelled to do business with me and a lot of business,” Bo stopped and shrugged, “what else could I do?”
The following year, Bo said business was still booming and that Chick-fil-A was one of the best things that ever happened to him. He chalked it up to luck and an accident of timing. As if to underscore this point, Bo often referred to himself as an “accidental activist.”
A sharp radio interviewer picked up on this theme. In a 2014 AM-radio show that featured Bo, the interviewer summarized a portion of their conversation just before cutting to a commercial: “You accidentally became an artist, you accidentally became an activist, and you accidentally took on the corporate bully, Chick-fil-A.”
In truth, Bo’s good fortune was not an accident.
At a 2014 speech at the Vermont Activism Celebration, Bo told the gathered crowd that he’d been inspired to stand up to Chick-fil-A by another Vermont trademark bullying case when the small business “made a fuss” on social media and stood up to Monster Beverages.
“It was kinda good for business, as it turned out,” Bo said. “So as a businessman I thought, I would like a little of that.”
Some in the audience laughed.
Meanwhile, on Facebook Bo appealed for folks to purchase T-shirts and to help him in his “legal battle,” to “help a David in a David and Goliath story,” and to support him in his “cease and desist battle.”
He posted pictures of himself snarling at a Chick-fil-A sign, giving them the finger, petitions for Chick-fil-A to stop bullying him, and Bob Marley’s song, “Stand up for your rights.”
“To those of you wondering if I’m still in business, YES I AM.” Bo told his Facebook fans if they already bought a T-shirt, “…consider buying another one or two. Good for you, good for me.”
When asked about the connection between his constant drumbeat against Chick-fil-A and sales of his T-shirts, Bo said he was just trying to keep the story alive and let people know that he was “fighting the good fight.”
However, what kept the story alive and allowed Bo to keep monetizing it for years was not anything that Chick-fil-A was actively doing to him or Eat More Kale, but rather the time consumed on the federal trademark application process. Specifically, it was the length of time that both the USPTO and Bo’s UNH pro bono legal team spent on his trademark application.
That process stretched four years. The appearance that it was intentionally drawn out and slowed down, raises a number of serious questions for the USPTO.
Despite numerous requests for interviews, the USPTO declined to comment.
At the 2017 White House Correspondents’ dinner, Carl Bernstein spoke about the lessons he learned from Bob Woodward in the Watergate scandal that resulted in the book and movie, All the President’s Men.
“Unreasonable government secrecy is the enemy,” Mr. Bernstein said, “and usually the giveaway about what the real story might be.”
That’s why I’m suing the government. The USPTO is keeping secrets in the Eat More Kale trademark conflict. Heavily redacted emails, blank pages, secret programs, and unresponsive requests for interviews seem unreasonable for a government agency that prides itself in transparency.
I want to pull back the curtain and tell the real story. My lawsuit on behalf of our Kickstarter-funded film is an attempt to get at that reality.
Update March 31, 2018: in a March 21, 2018 on-camera interview with me, T-shirt artist Bo Muller-Moore altered his claim that he had nothing to do with the length of time his Eat More Kale trademark application was taking.
In a contentious and sometimes heated two and a half hour interview in Waterbury, Vermont, Bo compared his conflict with Chick-fil-A to a game saying that he was being told by his lawyers and others that at the end of that game, he would not be able to print any more T-shirts. So, according to Bo, he did everything he could to make the game last longer — including telling his attorneys to “take the sweet time on the deadlines.”
Bo said this strategy had been established with his Vermont attorney “…from the start.”
Below is an edited excerpt from that interview:
LANTZ: So you never told anybody on your legal team to affect the timing of your application at the trademark office, whatsoever?
BO: I would’ve done what my lawyer said, which was ‘take the allotted time.’
LANTZ: All I’m asking is about is you. Did you ever talk to your lawyers — ?
BO: Yes, I did. I said, I don’t want this to end tomorrow, because I’m being told that tomorrow I can’t make another g**damned T-shirt. So yes, let’s take our deadlines, let’s take the sweet time on the deadlines that we’ve been provided so that I can make as many T-shirts as I can before I’m told I can’t.
LANTZ: To Facebook and the documentary you kept beating the drums, ‘I’m a victim of Chick-fil-A.’ To the lawyers and USPTO you were saying, ‘Take your time.’ So when you beat the drums as a victim of Chick-fil-A, it brings in a lot of money [from] people supporting you in your fight. At the same time, you’re telling your lawyers and the USPTO, to take their time: it gets more money, and people keep thinking you’re still a victim.
BO: I can totally live with that. I have no problems with that.
LANTZ: You’re telling your Facebook fans that you’re a victim of Chick-fil-A, but you’re elongating that process. You’re making yourself more of a victim.
BO: You’re not listening.
LANTZ: So tell me what I’m not hearing.
BO: I’m being told that I get to play one game and when that game’s over, I don’t get to play the game anymore. I’m going to do everything I can to make that f*cking game last longer. I have no problem with that. … Chick-fil-A still wanted to win the g**damned case, and that’s what everybody said was gonna happen. That doesn’t make me not a victim.
LANTZ: When we first got together, you said you were prepared for this to last ten years. What it feels like is that you wanted it to last 10 years, that you dragged it out as much as possible.
BO: Because I thought I was gonna lose! You’re not f*cking listening! Everybody including my lawyer said, ‘One day, you don’t get to make any more T-shirts.’… Tell me, when am I not a victim of Chick-fil-A? When someone’s standing above you waiting for their cease and desist order to be enforced, when was I not a victim?
LANTZ: [In 2011] Chick-fil-A sent you one cease and desist letter. And you said that you knew that, “it doesn’t mean shit…” They filed a similar letter at the USPTO. Chick-fil-A did nothing in 2012, 2013, 2014 and 2015. You conflated action from Chick-fil-A with your USPTO trademark application.
BO: You’re separating Chick-fil-A and the trademark office, I don’t know that I thought of it so separately. I just knew some force bigger than me was gonna say I didn’t get to make T-shirts at a point.
LANTZ: So let me be clear about what you’re saying: you’re saying you saw no difference between the USPTO and Chick-fil-A.
BO: I don’t recall thinking of them as two separate things, so much. To me they seemed like one force that was going to make a decision. Clearly, they’re not the same, I see that. But I don’t know, I don’t know.
James Lantz is an award-winning filmmaker and playwright in Burlington, VT. His Kickstarter-funded documentary film about the Eat More Kale conflict has been in production for six years. You can find out more about him at www.JamesLantz.com.
Emily Rhain Andrews is a freelance illustrator in Burlington, VT. You can find out more about her at http://www.eraillustration.com
Copyright 2018, James Lantz, Little Film / Big Noise, llc.