NOTE to Customers: This specific website page has no bearing on the availability of Chuck Evans’ MONTEZUMA Brand products. However, Chuck Evans’ MONTEZUMA Brand Sauces & Salsas 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.
* Knowingly using another company or individual’s property without permission is theft.*
From the Halls of MONTEZUMA® to the HALL of SHAME . . .Chuck Evans‘ TRADEMARK VIOLATORS LIST
For any company desiring to be removed from the SMOKEY CHIPOTLE® Trademark Violators List, satisfactory settlement with Chuck Evans’ MONTEZUMA Sauces & Salsas Brand is required.
UNITED STATES TRADEMARK INFRINGERS & TRADEMARK VIOLATIONS LIST
United States Patent & Trademark Office (USPTO)
Registration for SMOKEY CHIPOTLE® & SMOKIN’ CHIPOTLE®
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.
Chuck Evans MONTEZUMA Brand Sauces & Salsas, 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® sauces and salsas 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 Sauces & Salsas 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 135 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.
Since 1998 we have issued more than 185 Cease & Desist Letters to protect our trademark. The Minority of COMPANIES (those named on this list) have EXPRESSLY Refused to Comply with Our Cease & Desist Letter and continue to infringe our SMOKEY CHIPOTLE® trademark, except where noted below.
1. QUAKER STEAK & LUBE
Chestnut Street
Sharon, Pennsylvania 16146
Company: Corporate Copy-Cat Chicken Wing Purveyor
Product: Smoky Chipotle Chicken
Disposition: After receiving our November 9, 2010 cease and desist letter, Quaker Steak & Lube failed to acknowledge and resolve their intentional infringement of our Smokey Chipotle® trademark and continued to steal Chuck’s property right in naming their unoriginal and copycat chicken products and sauces.
2. APPLEBEE’S RESTAURANTS
Renner Blvd.
Lenexa, Kansas 66219
Company: Corporate Restaurant Service Company
Product: Applebee’s SMOKEY CHIPOTLE Chicken Fajita Rollup
Disposition: Applebee’s esteemed outside law firm: Stinson, Morrison, Hecker, LLP wrote on July 28, 2010: “As you may know, Applebee’s is the owner of many registered trademarks on its own…Accordingly, it is very eager to ensure that its activities do not infringe any third party’s valid trademark rights…{Applebee’s} intends to take no action on your cease and desist/settlement demand.” Obviously, Applebee’s has no concern for Chuck’s incontestable (as a matter of law) trademark which denies Applebee’s descriptive use of Chuck’s Smokey Chipotle trademark on their menu.
3. YUM! BRANDS, INC. D/B/A KFC -Kentucky Fried Chicken –
* March 2009 Settlement Agreement Concludes the Colonel’s Infringement*
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.
4. 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 Result: KRAFT FOODS IS THE EPITOME OF A MULTI-NATIONAL BULLY demonstrating No Respect for Stealing Property of Others*
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.
5. SARA LEE CORPORATION – Appears to have Discontinued Infringing Item
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.
6. RIBA FOODS, Inc.– Continues to Steal Property & Copycat Products
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.
7. GOYA FOODS, Inc.– Continues to Steal Property & Copycat Products
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.
8. SCHY-TOWN, INC.-Company Appears to be Out-of-Business
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.
9. FIGUEROA BROTHERS & CHEECH MARINS CHEECH FOODS DOT COM
-Company Appears to be Out-of-Business
Regal Row, Suite 128
Dallas, Texas 75247
Greg/David Figueroa, CEO/President
Company: American Food Manufacturer, Distributor, & Licensee
Product: CHEECHS 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.
10. SCOTTY B’s HOT SAUCE – Company Appears to be Out-of-Business
21st Street
Lewiston, Idaho 83501
Scott Bailie, Owner
Company: American Food Manufacturer
Product: Scotty B’s SMOKEY CHIPOTLE PEPPER SAUCE
Disposition: 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 Bs 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.
11. URBAN ACCENTS, INC.-LOST LEGAL CHALLENGE-Operates as sore Loser
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.
12. MONTY’S GOURMET FOODS, LLC -Company Appears to be Out-of-Business
North Main Street
Ottawa, Kansas 66067
Monty Fritts, Owner
Company: American Food Distributor
Product: Monty’s SMOKIN’ CHIPOTLE BBQ SAUCE
Disposition: 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.
13. MEIJER, Inc.-Discontinued Infringing Product
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.
14. EPICUREAN FOODS INTERNATIONAL– Company Appears to be Out-of-Business
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.
15. JERSEY MIKE’S SUBS-Discontinued Infringing Product
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.
16. TOPCO ASSOCIATES, LLC – Discontinued Infringing Product
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.
17. BYRDCLIFFE COOKERY,LLC -Company Appears to be Out-of-Business
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.
18. WILLIE B’s GOURMET FOOD PRODUCTS-Claimed to Discontinue Item Name
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.
19. WILDLY DELICIOUS FINE FOODS-Company Appears to be Out-of-Business
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.
20. DESERT GARDENS/COMFORT FOODS, INC.-Items appear to be discontinued
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.
21. NORTH of the BORDER-Company Appears to be Out-of-Business
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.
22. SPICE CONNECTIONS -Company Appears to be Out-of-Business
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.
23. WHOLE FOODS MARKET-Discontinued Infringing Product
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.
24. QUIZNOS SUBS-Discontinued Infringing Product
Lawrence, Ste. 400
Denver, Colorado 80202
Company: American Submarine Sandwich Master Franchisor
Product: SMOKY CHIPOTLE PEPPER SAUCE
Disposition: 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.
25. THREE HOT TAMALES, LLC – Company is Out-of-Business
Shaw Street
Garfield, New Jersey 07026
Company: Start-up Manufacturer of Sauces & Rubs
Product: Three Hot Tamales SMOKIN’ CHIPOTLE BBQ SAUCE
Disposition: Company appear is out of business.
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.
