The Louisville, Ky.-based chain trademarked the phrase in 1984 and claims Church’s use is ‘diminishing valuable rights’
Church’s Texas Chicken announced a few weeks ago that it was bringing back its original recipe, initially created in 1952. One of its major competitors, however, has taken issue with its advertising campaign to promote the return. That campaign includes the phrase “Our Original Recipe is Back.”
KFC founder Colonel Harland Sanders created his blend of 11 herbs and spices in 1939 and began using the “Original Recipe” trademark to advertise its chicken in 1972. KFC obtained a trademark for “Original Recipe” in November 1984 and for “Colonel Sanders Original Recipe” in October 2018. Now, the Louisville, Ky.-based chain has filed a lawsuit against Church’s in the U.S. District Court for the Eastern District of Texas, alleging that the Atlanta-based chain's use of the “original recipe” phrase is likely to cause confusion for customers.
In the court document, KFC said it sent a letter to Church’s on Oct. 24 objecting to its use of “original recipe,” stating it infringed on KFC’s trademark.
“(Church’s) ignored KFC’s letter and opted instead to expand its use and promotion of the mark,” the filing states, adding that Church’s conduct is “willful and in reckless disregard of KFC’s legal rights.”
“(Church’s) use of the Original Recipe mark is likely to create confusion in the marketplace and dilute the mark,” KFC continued, adding that Church’s actions are causing “irreparable harm” and “diminishing valuable rights” in the mark that KFC established more than 50 years ago.
“Purchasers and prospective purchases who are disappointed with (Church’s) products and services are likely to attribute their dissatisfaction to KFC,” the filing continues.
KFC is asking that Church’s be banned from using the “Original Recipe” phrase as well as unspecified monetary damages.
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