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.
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.
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
something odd happened.
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."
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
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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