It’s amazing just how many of the trademark disputes we see and discuss here at Techdirt ultimately result from the USPTO granting trademarks that never should have been granted in the first place. In the food industry specifically, we saw this recently in the whole “Taco Tuesday” episode, in which the Trademark Office granted Taco John’s a mark for “taco Tuesday,” despite the descriptive and fairly generic nature of the term. The end result was years and years of Taco John’s bullying other restaurants wielding a this trademark that never should have been a thing. It was only when another large entity with a sizeable legal war chest teamed up with LeBron James of all people to get the trademark rescinded.
Which brings us to KFC and its lawsuit against Church’s Chicken. KFC sued Church’s over the latter’s use of the phrase “Original Recipe”, for which KFC has a registered trademark.
Church’s use of the term “original recipe” in its advertising is “likely to deceive, confuse and mislead purchasers and prospective purchasers into believing the goods and services offered under the mark are affiliated with, authorized by, or come from KFC,” the chain operated by Yum Brands claimed in a lawsuit filed last week in U.S. District Court in Texas.
KFC became aware of Church’s use of the phrase toward the end of September, and objected in a letter it sent to the Atlanta-based chicken chain the following month, according to the suit.
“On behalf of fried chicken lovers out there, we take it personally when another company tries to claim our iconic taste and branding as their own,” KFC said in an emailed statement.
Let’s get the obvious out of the way. The trademark that KFC has for “Original Recipe,” granted all the way back in the 1970s, never should have been granted. That much should be plainly freaking obvious. The idea that you could grant such a mark to a damned restaurant of all things is insane. Companies that make food talk about their recipes all the time, of course. If a restaurant wants to revert back to its, you know, original recipe, then how the hell else are they supposed to tell the public it is doing so? This trademark never should have existed.
It’s descriptive and it’s generic, full stop.
Now, it certainly is true, as KFC takes great pains to lay our in its lawsuit, that KFC has famously used the phrase “original recipe” in its branding and advertising. In fact, it has become a cornerstone for KFC’s branding, typically around other references to its “secret blend of 11 herbs and spices.” But KFC’s lawyers damned well know that “original recipe” is descriptive and generic generally, not to mention how Church’s is using the phrase (more on that in a moment). That’s why they included this bit in their suit:
Because of KFC’s exclusive and extensive use of the ORIGINAL RECIPE®Mark, the mark has acquired substantial value and is widely recognized as identifying and distinguishing KFC as the source of goods and services offered in connection with the ORIGINAL RECIPE® Mark. KFC owns strong common law rights in the ORIGINAL RECIPE® Mark as a result of this extensive and continuous use, and the mark has become famous among the general consuming public of the United States and of Texas and represents an extraordinarily valuable goodwill to KFC.
Descriptive words and terms can be trademarkable if they either acquire a secondary meaning that the public primarily associates with the company applying for the mark, or if the mark becomes so famously associated with the applicant that the public predominantly associates it with the applicant’s company. Now, KFC, previously Kentucky Fried Chicken, has been using the “original recipe” phrase in its marketing since the 1950s.
The problem here is that this particular trademark isn’t merely descriptive; it’s also generic. And given we’re talking about using “original recipe” in marketing foodstuffs, say with me again now, the trademark never should have been granted. There’s no secondary meaning here and the association due to extensive use by KFC shouldn’t break through the simple mitigating fact that it’s generic in nature.
And if you need proof of that, you can simply refer to KFC’s own lawsuit showing how Church’s is using the phrase.
If you think any of that causes an association with KFC (as the lawsuit alleges), especially with all of the Church’s branding that accompanies the messaging, then you have head trauma and should see a doctor. In the context of that messaging and branding, the term is being used both generically and, frankly, literally. Church’s is reverting its recipe for its chicken back to its original recipe. It’s a factual statement. And that really, really should not be an infringement of any trademark. The point of trademark law is not to be able to prevent a competitor from making a factual statement of this kind.
So here we are again, thanks to the Trademark Office granting a trademark that it never should have, due to its generic nature within the marketplace in which the applicant operates. This case is practically begging for the same kind of collective action to get this generic trademark cancelled as happened in the whole “Taco Tuesday” fiasco.
