The news outlets, marketing trade magazines and Twitter came alive this week when Colonel Sanders galloped back onto the scene to once again promote his Kentucky Fried Chicken. Numerous articles talked about his return, the advertising reasons behind bringing him, and the hope to de-throne Chick-fil-A. The campaign even evoked a little star power by including Saturday Night Live alumnus Darrell Hammond to sport the white suit and play the Colonel. You can now even follow the Colonel on Twitter.
In case you have missed the commercials on television, here is one.
There is no doubt use of the Colonel is a very good marketing device by playing off of society’s current fascination with American pop nostalgia, as evidenced by the popularity of television shows like American Pickers. However, the real reason for the popular character showing his face again is more grounded in trademark law than in clever marketing theory, regardless of what their spokespeople say.
I can admit it. Most people do not think trademark law is sexy. Unless there is a big lawsuit with someone paying millions of dollars to another party, it is not going to be your headline on the news. I own the fact my little world of interest is sometimes only interesting to me and a few others. So, I can appreciate why the spokespeople decided to go with the spin of American nostalgia when bringing back the Colonel.
The real reason Colonel Sanders needed to make a comeback is because of a necessary filing with the United States Patent and Trademark Office (USPTO) called a Section 8 Affidavit and a Section 9 Renewal Application. The other reason is because in 2006 KFC lost their trademark rights in the famous phrase “it’s finger lickin’ good.” A few weeks ago in What is the Difference Between the ® and TM? and Should I Register My Trademark Without an Attorney?, I talked about the process of receiving a trademark. I talked about the length of time, the technicalities required and how receiving a federal registration is the only way you can legally use the ®. Unfortunately, though, receiving the trademark is only the beginning when it comes to your requirements as a trademark holder to the USPTO in order to keep an enforceable trademark.
For a trademark to remain valid/enforceable certain sworn documents stating the mark is still being used in commerce must be periodically filed, of course with actually continuing to use the mark in commerce. Attached to these sworn documents, the owner of the mark must also attach examples showing use of the mark in commerce. Some examples include screen shots of commercials, tags on clothing or print advertising. The years to keep in mind are 5 years initially and 10 years thereafter.
An Affidavit of Use (Section 8 Affidavit) must be filed between the 5th and 6th years after registration. Thereafter, the affidavit must be filed within the year before the end of every 10 year period after the date of registration. But, wait, there’s more! The owner of a valid trademark must also file a Section 9 renewal application (Section 9 Renewal) within the year before the end of each successive 10-year period following the date of registration. If these two documents are timely filed, then the registration is renewed for an additional 10 years, but only for 10 years. Each 10 year period requires the owner of the trademark to file the Section 9 Renewal indicating use of the mark. Failure to timely file carries a big consequence to the owner of the mark.
Failure to file these documents, not showing use in commerce and not using the mark in commerce, will send the trademark, no matter how famous, to the land of registration cancellation. Meaning, all the work or money you sent to your attorney to secure a federally registered mark does not matter. There is no life support to revive the mark. You simply must start over and hope to receive registration again. During the time period between the land of cancellation and your hope to receive a registration again (or as I like to call it Trademark Purgatory), the logo, tagline or brand is up for grabs for others to adopt and start using it without any real repercussions available to you as the original owner.
By now, I hope you see why Colonel Sanders is now making an appearance. As some of the news articles state, we have not seen the Colonel in quite some time. A search with the USPTO office shows registration number 72209177, the drawing mark of the character Colonel Sanders, received a letter from the USPTO on March 22, 2015. The letter sent to the KFC Corporation was a courtesy reminder about the Section 8 and Section 9 filings for the registration received in 1966. The letter states the affidavits are due for completion no later than March 22, 2016. You can view the reminder HERE and you can view the Colonel Sanders trademark registration from 1966 HERE. KFC could not legally swear on these affidavits of use in commerce unless the company is actually using the mark in commerce and showing examples of the use. To the left is a screen shot from the current commercial showing the use in commerce.
Photos I took when the commercial aired earlier this week also show trademark indications a plenty. While the face of the Colonel shows the ® to indicate its proper designation, the phrase “it’s finger lickin’ good” only shows a TM designation, which as pointed out in earlier posts, here, is only used when in process of seeking registration. How could KFC not register the trademark in “it’s finger lickin’good” after all these years?A search with the USPTO shows at one point in time KFC Corporation did own the phrase “it’s finger lickin’ good.” However, they failed to timely file the proper affidavits. The registered trademark in the phrase “it’s finger lickin’ good” was cancelled. KFC is now in Trademark Purgatory where they are seeking to once again establish rights in the legendary trademark. You can view the cancellation that happened on September 30, 2006 by going HERE. The status of the trademark for “it’s finger lickin’ good” states, “This registration was not renewed and therefore has expired.” Ouch! All that time and money building a brand around a slogan ruined by not completing paperwork based on use in commerce.
Why do trademarks who have been around so long, like Colonel Sanders from 1966, still have to certify use to the U.S. Trademark Office? The USPTO is only concerned with protecting marks/brands/logos/taglines that are actually being used in commerce. If the mark is not being used in commerce, then it should not be given protection from and the right to bar others from using the mark. Kentucky Fried Chicken is pulling out the big guns by way of a stark white suit and a big ole’ bucket of friend chicken to show the world Colonel Sanders is still used in commerce, and the chicken is still “finger lickin’ good!”
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