A Strange Trademark Menu: Hamburgers, Chick-fil-A and Bo Jackson

A Strange Trademark Menu: Hamburgers, Chick-fil-A and Bo Jackson

Last week, N'Genuity Enterprises sued Chick-fil-A for trademark infringement. The oddities (I mean "facts") of the case involve ex-professional athlete Bo Jackson, the "Bo Burger," and the talking cow from the Chick-fil-A commercials.

N'Genuity and Bo Jackson came to an agreement whereby Jackson received a non-controlling interest in N'Genuity stock (49% of the initial stock offering) and a seat on N'Genuity's board of directors. In exchange, N'Genuity allegedly received the exclusive use of Jackson's name and likeness to promote food products. N'Genuity later registered several "Bo Jackson" marks, and allegedly, Jackson consented in writing to the issuance of each of these registrations.

Between 2001 and 2008, N'Genuity invested heavily in promoting food products under the name "Bo Jackson Signature Foods," including the "Bo Burger." Sales of these products were successful. N'Genuity planned to market Jackson branded products nationwide exclusively through Sysco Foods, with the Bo Burger as the flagship product. Through N'Genuity's promotion of its "Bo" family of marks and Jackson's famous likeness, sales of "Bo Jackson Signature Foods" at one time allegedly reached the millions of dollars.

But then something odd happened.

In 2008, without N'Genuity's knowledge or consent, Jackson appeared in a Chick-fil-A advertisement that ran on national television. In the commercial, Jackson's likeness appeared on the head of a talking/mooing cow. The commercial's subtitles urged viewers to eat more chicken and stated that Bo "Never took up burgers."

As expected, Bo's chicken commercial didn't help N'Genuity's distribution of the Bo Burger. As set forth in N'Genuity's complaint:

As a result of the advertisement, N'Genuity received concerned communications from customers regarding Jackson's appearance, in which those customers, including Sysco, expressed confusion and consternation over Chick-fil-A and Jackson's illegal and misleading disparagement of N'Genuity's products.

Jackson avoided all communication with N'Genuity despite dozens of attempts to contact him about the advertisement and its effects on N'Genuity's business. Jackson made no attempt to contact N'Genuity about the advertisement, or to mitigate the harm that it caused. Jackson's conduct in the wake of the advertisement manifested at best a deliberate indifference to his unlawful acts.

As a direct result of Jackson's deliberate and malicious actions, and Chick-fil-A's willful, unlawful use of Jackson's name and likeness in this advertisement, sales of N'Genuity's BO JACKSON SIGNATURE FOODS products shrunk to less than $100,000 in the next year. N'Genuity's business relationship with Sysco Foods fizzled shortly after the advertisement ran.

In suing Chick-fil-A, N'Genuity claims ownership of all rights, title and interest in the use of Jackson's name and likeness as applied to food products. Chick-fil-A is accused of, at the very least, having constructive notice of N'Genuity's registered marks and of acting in willful disregard of N'Genuity's exclusive rights. With regards to knowledge, the complaint states:

Jackson was fully aware of the planned launch of Bo Jackson Signature Foods through Sysco's distribution channels, and his affiliation with N'Genuity is an easily ascertainable matter of public record. For example, Jackson signed documentation in proceedings at the Patent and Trademark Office granting his written consent to the issuance of the registrations for the registered marks, the first of which was issued in October of 2007. This documentation acknowledged that N'Genuity was registering exclusive rights in and claiming ownership rights to Jackson's name in connection with the sale or promotion of food products. The description of services for the registration of "BO JACKSON SIGNATURE FOODS, as well as two others expressly includes poultry. Much if not all of this information would have been available to Chick-fil-A upon a rudimentary investigation on the U.S. Patent and Trademark Web site ....

View or download the complaint filed in N'Genuity v. Chick-fil-A, 11-05180 (N.D. Ill. July 29, 2011)

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