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UNITED STATES TRADEMARK VIOLATORS COLUMBUS, CINCINNATI & OHIO RETAIL LOCATIONS
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NOTE to Customers: This specific website page has no bearing on the availability of Chuck Evans' MONTEZUMA Brand products. However, Chuck Evans' MONTEZUMA Brand believes that this novel method of public notification of trademark infringers addresses the legal difficulties of maintaining and protecting a registered trademark, as well as the goodwill associated with the trademark, and therefore is constructive for consumer education about the theft of intellectual property rights.
from the Halls of MONTEZUMA to The HALL of SHAME . . . THE TRADEMARK VIOLATORS LIST For any company desiring to be removed from the SMOKEY CHIPOTLE® Trademark Violators List, satisfactory settlement with Chuck Evans’ MONTEZUMA® Brand is required.
USPTO TRADEMARK INFRINGERS & UNITED STATES TRADEMARK VIOLATIONS LIST
United States Patent & Trademark Office Registration for SMOKEY CHIPOTLE® & SMOKIN' CHIPOTLE® Chuck Evans’ MONTEZUMA Brand, formerly Sauces & Salsas, Ltd., maintains the registration of an incontestable trademark filed November 5, 1993 at the United States Patent & Trademark Office [USPTO] for SMOKEY CHIPOTLE®; Registration No. 1,874,062 registered January 17, 1995 for product Class 30. Chuck Evans’ suggestive trademark was the very first USPTO application incorporating the word "chipotle". At that time, Chuck's suggestive use of the word "Smokey", which is a variant spelling, combined with the word "Chipotle", created a unique phrase suggesting Chuck's prepared condiments, including sauces, salsas, seasonings, and pepper sauces had smoke-flavored characteristics. Chuck introduced the chile chipotle, a processed spice, to mainstream American consumers, creating the very first commercially-manufactured chipotle pepper sauce and chipotle salsa made in the United States. Chuck marketed his one-of-a-kind SMOKEY CHIPOTLE® products through the many specialty food catalogs that peppered the United States before the onslaught of the internet. The general public had no previous knowledge of a "chipotle". Chuck's inclusion of the word "smokey" in his trademark phrase permitted consumers to immediately conclude Chuck Evans’ MONTEZUMA SMOKEY CHIPOTLE® Brand products contained a smoky flavor, however; the general public had no idea of the chipotle's origin or definition. Ironically, 20+ years since Chuck introduced the chile chipotle, the general public is still unclear as to the actual definition of the word "chipotle", where "chipotle" in and of itself, is descriptive. Chuck's federal trademark, a redundant phrase of the definition of "chipotle", continues to stand the test of time by acquiring secondary meaning in suggesting the smoky flavor of Chuck Evans’ trademarked products. SMOKEY CHIPOTLE ®, including commercial expression, spelling variations, similar spellings, explicit or implicit definition, marketing construction, phraseology, phrase similarities, and phrase intent, is registered for Chuck Evans’ exclusive use in commerce to prevent competitors in the same or similar classification from using a suggestive and/or confusingly similar mark or derivative of our trademarked phrase. However, no claim is made to the exclusive right to use the word Chipotle apart from the mark SMOKEY CHIPOTLE®; which mark has acquired secondary meaning where the SMOKEY CHIPOTLE® trademark is associated with our products. Nominative use, i.e., descriptor use; is therefore not an affirmative defense where the confusingly similar use of our trademark is not necessary for identification of competitor ingredients or products. A competitor's "Fair Use" of the descriptor Chipotle, meaning smoky or smoked chile, is all that is necessary to identify competitor ingredients or products, whereby Chuck Evans maintains no exclusive right to the word Chipotle. Chuck Evans actively protects SMOKEY CHIPOTLE® and timely contacts all entities who implicate, infringe upon, and/or violate our exclusive intellectual property rights. Subsequent to federal registration of SMOKEY CHIPOTLE®, numerous entities (currently over 105 notifications since 1995), have been contacted requesting immediate resolution to their infringement and to terminate inappropriate usage of our trademark; including Chuck Evans’ request for minimal consideration in exchange for a settlement concession allowing for depletion of the infringer's existing inventory, pre-printed labels and packaging. In the majority of cases, the trademark infringement is addressed promptly and settled accordingly. In December 2007, a Petition for Cancellation of Chuck Evans' SMOKEY CHIPOTLE® trademark was dismissed with prejudice by the United States Trademark Trial & Appeal Board. In August 2008, the U.S. Trademark Office granted Chuck Evans’ registration of SMOKIN' CHIPOTLE® after dismissing Kraft Foods objection upon publication of Chuck's new trademark.Certain companies, listed below, refuse to reach a satisfactory resolution when requested to cease and desist infringement of the SMOKEY CHIPOTLE® trademark. Such refusal to amicably settle infringement of our trademark pursuant to the infringer's corporate responsibilities and public and ethical obligations, requires the consideration of costly legal action to enforce protection of our registration. Therefore, in addition to federal injunctive remedies, Chuck Evans has created a public-notification alternative...an ongoing list of trademark infringers whom have ultimately refused to amicably settle their violation and/or refused to discontinue infringement of our trademark. However, such refusal does not preclude remedies of federal enforcement and injunctive relief. 1.YUM! BRANDS, INC. D/B/A KFC® -Kentucky Fried Chicken - *** March 2009 Settlement Agreement Concludes the Colonel's Infringement*** 1441 Gardiner Lane Louisville, Kentucky 40213 Robert Millen, Senior Vice-President Litigation Phillip Davison, Trademark Counsel Independent Legal Counsel Retained to Defend KFC... Townsend and Townsend and Crew LLP: David Sipiora & Shelley Mixon Company: Largest Fast-Food Conglomerate in the World (35,000+ restaurants) KFC/Kentucky Fried Chicken is the Largest Fast Food Chicken Restaurant Chain in the World (14,000+ worldwide units/5,300 KFC units in the United States) Other Yum! Brand Companies: Taco Bell, Pizza Hut, Long John Silver's and A&W Foods Product: KFC® SMOKY CHIPOTLE CRISPY FRIED CHICKEN Disposition: More than 65 years after Colonel Sanders introduced his Original Recipe® fried chicken along with Extra Crispy™ which was added 20 years ago, KFC has added "just its third flavor to the menu-Smoky Chipotle Crispy." KFC settled the infringement.
2. KRAFT FOODS, NORTH AMERICA ***KRAFT FOODS LOST 2 Legal Challenges at the U.S. Trademark Office to Cancel Smokey Chipotle ® (2007) & Smokin'Chipotle ®(2008)Trademarks*** Three Lakes Drive Northbrook, Illinois 60091 Company: Multi-National Conglomerate Packaged Food Manufacturer Product: KRAFT® BULLSEYE® Barbecue Sauce SMOKIN' CHIPOTLE Disposition: Immediately upon receiving Chuck's cease and desist request in 2006, Kraft Foods decided to throw its corporate weight around, conspiring in the filing of a cancellation proceeding against Chuck's incontestable trademark, Smokey Chipotle®; as well as filing an objection to registration upon official publication of Chuck's new trademark registration, Smokin'Chipotle.® In December 2007, the Trademark Trial and Appeals Board dismissed with prejudice, the Petition for Cancellation of Smokey Chipotle® where Kraft Foods conspired with Urban Accents, Inc. (listed below) in a failed challenge by alleging Smokey Chipotle® is a generic phrase for a chile chipotle (a variety of processed chile, i.e., a spice); heretofore the word "chipotle" was already disclaimed as a condition of registration at the U.S. Trademark office in 1995. On August 28, 2008, the USPTO dismissed with prejudice, and terminated Kraft's opposition to publication of Chuck's new Smokin'Chipotle® trademark registration.
3. SARA LEE CORPORATION Three First National Plaza Chicago, Illinois 60602-4260 Company: Multi-National Meat and Processed Food Manufacturer Product: SARA LEE® SMOKIN CHIPOTLE Seasoned Breast of Turkey Disposition: On August 25, 2006 a cease and desist letter was received and ignored by Sara Lee Corporation. In late October, outside counsel Randy Springer of Womble Caryle LLC in Winston-Salem, North Carolina responded via telephone assuring us that a written response would be forthcoming. No response was ever sent. Over the next four months, we made numerous attempts to contact Mr. Springer. Mr. Springer ignored our messages. Subsequently, in late February 2007 Sara Lee Corporation unilaterally dictated terms and conditions of a verbal "agreement" to knowingly and intentionally infringe upon the Smokey Chipotle® trademark over the next seven months. This matter remains pending.
4. RIBA FOODS, Inc. P.O. Box 630461 Houston, Texas 77263 Miguel Barrios, Jr., President Company: American Food Manufacturer Product: ARRIBA! SMOKED CHIPOTLE BEAN DIP Disposition: Riba Foods, Inc., manufacturer of ARRIBA! brand products, refused to respond to our Certified Letter sent January 12, 2006 and failed to respond to several subsequent letters. This is the second, and separate item, infringement of our trademark by Riba Foods, Inc., who has intentionally ignored our request for an amicable settlement to discontinue use of their confusingly similar product name. This matter remains pending.
5. GOYA FOODS, Inc. 100 Seaview Drive Secaucus, New Jersey 07096 Robert Unanue, CEO Company: Large International Hispanic Foods Manufacturer & Distributor Product: Goya Salsita Smoky Hot Chipotle Chiles Hot Sauce Disposition: Implicating our uncontested trademark, multi-national food manufacturer Goya Foods, Inc. refused to respond to our Certified Letter signed return receipt on January 17, 2006 and failed to respond to several subsequent letters. This matter remains pending.
6. SCHY-TOWN, INC. P.O. Box 2424 Northbrook, Illinois 60065 Dave Schy, Owner Company: Regional Sauce Manufacturer/Marketer of Spicy Ketchup-based Products Product: Ketchipotle® Hot & SMOKEY CHIPOTLE Peppers Disposition: After several correspondences pursuant to Mr. Schy's intentionally-deceptive method of responding solely via FAXes (where he lists no return phone number and no return FAX number), Mr. Schy apparently decided that mutual settlement of his direct infringement of Smokey Chipotle® was not important enough to settle accordingly. Mr. Schy claimed upon notification that he had already corrected his website, which he did not, and would change his label. This matter remains pending.
7. FIGUEROA BROTHERS & CHEECH MARIN’S CHEECH FOODS DOT COM -Discontinued Infringing Product? 151 Regal Row, Suite 128 Dallas, Texas 75247 Greg/David Figueroa, CEO/President Company: American Food Manufacturer, Distributor, & Licensee Product: CHEECH’S SMOKIN’ CHIPOTLE HOT SAUCE Disposition: Figueroa Brothers and Cheech Marin's Foods refused to respond to our Certified Letter signed return receipt sent March 15, 1999 and continue to intentionally ignore our federal registration through uninterrupted use of a confusingly similar phrase in the sale of this Cheech Foods Dot Com product. The manufacturer and licensee have continuously marketed their product implicating our SMOKEY CHIPOTLE® trademark. Pursuant to Chuck's new registration this matter remains pending. However, it appears that the infringing product may have been discontinued.
8. SCOTTY B's HOT SAUCE -Company Appears to be Out-of-Business 826 21st Street Lewiston, Idaho 83501 Scott Bailie, Owner Company: American Food Manufacturer Product: Scotty B's SMOKEY CHIPOTLE PEPPER SAUCEDisposition: Tiny manufacturer Scotty B's Hot Sauces refused an amicable settlement on January 19, 2006 by asserting a ridiculous excuse that the words Smokey and Chipotle were not on the same line and that the words comprising our registered trademark were different colors on his label, therefore Mr. Bailie concluded that Scotty B’s was not infringing upon our trademark. At present, it is believed that the infringing mark has been removed from their labels, however, subsequently as of September 8, 2006, Scotty B's introduced a second hot sauce labeled Smok'in BBQ Flavor Chipotle Pepper Hot Sauce where the words Smok'in and Chipotle are directly positioned above and below each other on their label infringing upon Chuck's trademark for the second time. At present, there is no information on whether this company remains in business.
9. URBAN ACCENTS, INC.-LOST THEIR LEGAL CHALLENGE! 1770 West Bertreau, 5th Floor Chicago, Illinois 60613 Company: American Specialty Foods Marketer & Distributor Product: SMOKY CHIPOTLE POPCORN SEASONING Disposition: In late July 2006, Urban Accents, Inc. through their counsel, Patton Boggs, LLP, filed a Petition for Cancellation No. 92046091; alleging generic use of Smokey Chipotle® before the U.S. Patent and Trademark Office Trial and Appeal Board, alleging that the phrase "smokey chipotle is the common generic name for any sauces, spices, or other food products containing hot peppers". {See Petition @ para. 6.} In December 2007, the Trademark Trial and Appeals Board dismissed, with prejudice, their Petition for Cancellation. Smokey Chipotle® is not a generic name for an ingredient and our trademark was upheld. Urban Accents continues to market the infringing product and this matter remains pending.
10. MONTY'S GOURMET FOODS, LLC -Company Appears to be Out-of-Business 516 North Main Street Ottawa, Kansas 66067 Monty Fritts, Owner Company: American Food Distributor Product: Monty's SMOKIN' CHIPOTLE BBQ SAUCEDisposition: Pursuant to notification on September 25, 2007, food marketer Monty Fritts continues to ignore repeated requests to cease and desist infringement of our trademark. We are not sure if this small marketer of re-labeled products remains in business.
11. MEIJER, Inc.-Discontinued Infringing Product 2929 Walker, N.W. Grand Rapids, Michigan 49544-9428 Wendell P. Russell, Jr., Senior Counsel Company: Large Midwest Grocery retailer headquartered in Michigan Product: Meijer Gold Brand Smoky & Spicy Chipotle Salsa Disposition: Michigan-based grocer Meijer, Inc. refused amicable settlement on March 7, 2006, however, Senior Counsel Wendell P. Russell, Jr. knowingly continued infringement of our trademark by admission of Meijer's continued use. The infringing product was subsequently discontinued shortly thereafter.
12. EPICUREAN FOODS INTERNATIONAL 300 Mill Street, Unit #9 Kitchner, Ontario, Canada N2M568 Greg Sproat Company: Canadian Food Manufacturer & Distributor Product: SMOKEY CHIPOTLE PEPPER SALSA & DIP Disposition: Canadian Epicurean Foods refused to settle trademark infringement of our SMOKEY CHIPOTLE® trademark as of August 15, 2005 asserting that no claim could be made under Canadian trademark law, however, after admitting in the same conversation that Epicurean Foods sold products to U.S. consumers via the internet and regularly exhibited at the annual International Fancy Food & Confection Show in New York City sampling their product line (in the USA) to procure sales. This company has infringed our trademark a second time and the matter remains pending.
13. JERSEY MIKE'S SUBS-Discontinued Infringing Product 2251 Landmark Place Manasquan, New Jersey 08736 Company: American Submarine Sandwich Franchisor Product: SMOKY CHIPOTLE MAYONNAISE Disposition: New Jersey-based Jersey Mike's Subs refused to respond to our Certified Letter sent January 17, 2004 and failed to respond to several subsequent letters implicating our SMOKEY CHIPOTLE® trademark. The product was removed from their menu.
14. TOPCO ASSOCIATES, LLC-Discontinued Infringing Product 7711 Gross Point Road Skokie, Illinois 60077 Steve Lauer, CEO Company: Large North American Food Manufacturer & Marketer of Private Label Products for many large Grocery Store Chains in the United States Product: World Classics Trading Co. Southwestern Style SMOKY CHIPOTLE Salsa Disposition: A letter was sent on April 28, 2006 by Carol Genis, associate for the law firm of Bell, Boyd, & Lloyd, LLC, in response to our certified letter dated April 24, 2006 requesting a settlement resolution of Topco's obvious infringement. Ms. Genis states, "Please be advised that I am in the process of reviewing the issue with my client and will respond to you in short order." After waiting patiently for more than a month and then making subsequent attempts to reach Topco's crackerjack counsel, it is clear that Ms. Genis had no intention to respond. Topco discontinued their infringing product.
15. BYRDCLIFFE COOKERY,LLC -Company Appears to be Out-of-Business 954 South Pine Creek Road Fairfield, Connecticut 06824-6348 Company: American Food Manufacturer Product: What You do with Tofu! SMOKY CHIPOTLE Disposition: Small Organic food manufacturer Byrdcliffe Cookery refused to respond to our Certified Letter sent February 17, 2006 and failed to respond to several subsequent letters implicating our SMOKEY CHIPOTLE® trademark. At present, there is no information on whether this company remains in business.
16. WILLIE B's GOURMET FOOD PRODUCTS -Claimed to Discontinue Infringing Product P.O. Box 971 Rockwall, Texas 75087 Steve Deere, President Company: American Food Manufacturer Product: Willie B's Texas Style SMOKEY CHIPOTLE Bar-B-Que Sauce Disposition: Small manufacturer chose to discontinue infringing upon our SMOKEY CHIPOTLE® trademark. However, Willie B's refused to address other matters, therefore, failing to reach a mutually satisfactory settlement.
17. WILDLY DELICIOUS FINE FOODS-Company Appears to be Out-of-Business 47 Railside Road Toronto, Ontario Canada M3A 1B2 Austin Muscat, COO Company: Canadian Food Manufacturer with USA Distribution Product: Wildly Delicious SMOKY CHIPOTLE & Chilli Spice Paste Disposition: Wildly Delicious did not respond to our Certified Letter sent April 21, 2006 and failed to respond to several subsequent letters implicating our SMOKEY CHIPOTLE® trademark.
18. DESERT GARDENS/COMFORT FOODS, INC.-Items appear to be discontinued 9900 Montgomery Blvd. NE Albuquerque, New Mexico Company: Manufacturer of Spices & Seasonings Product: Desert Gardens SMOKIN' CHIPOTLE Seasoning & SMOKEY CHIPOTLE Cornbread Mix Disposition: Desert Gardens did not respond to our Certified Letter sent April 21, 2006 and failed to respond to several subsequent letters implicating our SMOKEY CHIPOTLE® trademark.
19. NORTH of the BORDER P.O. Box 433 Tesuque, New Mexico 87574 Company: Small American Food Marketer & Distributor Product: North of the Border SMOKEY Jose's CHIPOTLE Salsa & SMOKEY Jose's CHIPOTLE Spice Mix Disposition: North of the Border, another New Mexico company, did not respond to our Certified Letter sent April 24, 2006 and failed to respond to several subsequent letters implicating our trademark. This small company has intentionally and repeatedly attempted to confuse customers by capitalizing on our SMOKEY CHIPOTLE® trademark. This matter remains pending.
20. SPICE CONNECTIONS -Company Appears to be Out-of-Business 1170 Voss Circle Blair, Nebraska 68008 Company: Small Spices & Seasonings Marketer Product: Spice Connections SMOKED CHIPOTLE Cheese Spread and Dip Mix Disposition: Spice Connections did not respond to our Certified Letter sent April 24, 2006 and failed to respond to several subsequent letters implicating our SMOKEY CHIPOTLE® trademark.
21. WHOLE FOODS MARKET-Discontinued Infringing Product 550 Bowie Street Austin, Texas 78703-4677 Company: Largest North American Natural Food Grocer & Marketer Product: 365 Organic® SMOKED CHIPOTLE Marinade Disposition: Whole Foods Markets did not respond to our April 24, 2006 Certified Letter until July 31, 2006, and only after several follow-up documents were mailed to elicit a response. Employing outside counsel, Whole Foods claimed that their use of the infringing mark was discontinued and that the matter was settled.
22. QUIZNO’S SUBS-Discontinued Infringing Product 1475 Lawrence, Ste. 400 Denver, Colorado 80202 Company: American Submarine Sandwich Master Franchisor Product: SMOKY CHIPOTLE PEPPER SAUCEDisposition: Denver-based Quizno's Subs refused to settle infringement of our SMOKEY CHIPOTLE® trademark pursuant to their last correspondence dated April 28, 2004 and prior to conclusion of their national television advertising campaign. Subsequently, the product was removed from their menu.
23. THREE HOT TAMALES, LLC-Company Appears to be Out-of-Business 33 Shaw Street Garfield, New Jersey 07026 Company: Start-up Manufacturer of Sauces & Rubs Product: Three Hot Tamales SMOKIN' CHIPOTLE BBQ SAUCE Disposition: Company appears to be out of business.
BETWEEN 2004-2006, NEARLY 50 COMPANIES INFRINGED UPON OUR SMOKEY CHIPOTLE® TRADEMARK. NEARLY ALL HAVE REMOVED THE INFRINGING PRODUCT.
UPDATE...WE HAVE ISSUED 31 CEASE AND DESIST REQUESTS SINCE 2006. IN 2007-2009, SEVERAL COMPANIES ON THIS LIST CONTINUE TO INFRINGE OUR SMOKEY CHIPOTLE® TRADEMARK. DUE DILIGENCE AND ENFORCEMENT IS ONGOING TO PROTECT OUR INTELLECTUAL PROPERTY RIGHTS.
EPILOGUE Most companies, from the smallest mom-and-pop operators to the largest food processors and multinational corporations recognize their responsibilities to the general public and the associated costs incurred by a trademark owner to protect intellectual property rights. These entities, through a mutually agreed settlement, promptly terminate any and all likelihood of confusion for their inadvertent infringement of our uncontested SMOKEY CHIPOTLE® trademark. However, due to the confidentiality of the Settlement Agreements, Chuck Evans’ MONTEZUMA Brand, is not at liberty to disclose the names of the many companies and individuals that value and uphold their ethical, civic, corporate, and legal obligations to voluntarily comply with federal law, i.e., Title 15 of the United States Code, commonly known as the Lanham Act.
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