I’ll preface this post by saying a part of me hates writing posts like this. We recently talked about a trademark lawsuit brought by KFC against Church’s Chicken centered on Church’s advertisements of a return to its “original recipe” for some of its chicken. Powering the suit was the trademark KFC has on the term “Original Recipe”. As I outlined in the original post, this trademark granted by the USPTO way back in the 1970s never should have been a thing. It’s generic, it’s descriptive, and it’s all the moreso both when you consider that it was granted for the restaurant market.
So why do I partially hate writing posts like this one? Well, because we recently got news that KFC has dropped the suit entirely, citing that it reached an amicable resolution with Church’s. My frustration stems entirely from the completely opaque nature of whatever that resolution is. Here is the entirely of what we know:
um! Brands’ KFC (YUM.N), opens new tab told a Texas federal court on Tuesday that it would end its lawsuit over rival fast-food chain Church’s Texas Chicken’s use of its trademarked phrase “Original Recipe” in advertising.
KFC and Church’s said they “amicably resolved” the dispute in a statement provided by a KFC spokesperson on Tuesday. KFC asked the court to dismiss the case, opens new tab without prejudice, which means it could refile the lawsuit later.
So, since there doesn’t appear to be any public information as to what the resolution was to this, all I can really do is speculate. So speculate I shall!
If I had to place any bets, I would bet that Church’s lawyers explained to KFC that its use was generic and descriptive in nature, thereby not being trademark infringement. I would bet as well that Church’s legal team pointed out that if this suit were to continue it would consider petitioning to have KFC’s “Original Recipe” trademark canceled for the same reasons. I would further guess that KFC got Church’s to agree to only use the term in these same descriptive and generic ways, in order to make this suit go away.
Why is that what I think happened? A couple of reasons. First, settlements like this, even those with terms not made publicly, often come with at least the news that the defendant will change its use of trademarked terms in question. That doesn’t seem to be in any of the announcements about this settlement. There’s no reason for it not to be; everyone will notice if Church’s suddenly rips down all the signage that advertises its original recipe.
Second is the dismissal without prejudice. That leads me to believe that Church’s agreed not to use the language in ways beyond what it has to date, in terms of it being descriptive and generic in nature. This allows KFC to file suit again if Church’s goes beyond that.
Admittedly, as stated, that is all pure speculation. I guess in the meantime I’ll just have to walk by my local Church’s Chicken and see what the signs say. But for now, this lawsuit is dead.
