United States Trademark Violators

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.

For any company desiring to be removed from the SMOKEY CHIPOTLE® Trademark Violators List, satisfactory settlement with Chuck Evans’ MONTEZUMA® Brand is required.

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 95 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.

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.

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)

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."

According to KFC's website, in their Legal Restrictions section, "This web site contains many of the valuable trademarks owned and used by KFC Corporation...throughout the world to distinguish its quality products and services." What KFC's website fails to say is that YUM! Brands has no issue with knowingly and intentionally stealing/infringing upon our 14-year old incontestable Smokey Chipotle® trademark with a massive multi-million dollar international advertising campaign that saturated cable and television channels between May 25 and June 28, 2008. Commercials continue to air into July. KFC has effectively obliterated, diluted, and destroyed an intellectual property right carefully cultivated over the past 21 years by an entrepreneur who introduced the chipotle spice to mainstream America. "We've worked tirelessly to develop this new flavor," says James O'Reilly, chief marketing officer for KFC. "We don't take fried chicken flavor introductions lightly at KFC, and we took our time to painstakingly perfect this new recipe." Source: May 28, 2008 KFC Press Release. Chuck Evans has consistently and continually promoted his Smokey Chipotle® product line for more than 2 decades. Chuck's trademark, which had acquired secondary meaning for our sauces, salsas, seasonings, and spicy products, will forever be associated with KFC.

The most basic search on any of KFC's thousands of employee computers would have yielded the result that Smok(e)y Chipotle® is a registered trademark. In fact, in most search engines our trademark appears first and nearly always on the first page. Federal law is clear: "there is a legal presumption of bad faith, when Respondent reasonably should have been aware of complainant's trademarks, actually or constructively" Digi Int'l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002).

In a letter dated July 3, 2008, independent counsel, David Sipiora, asserts, "KFC's use of the term "smoky chipotle" does not constitute trademark use" because it is not "being offered as a "brand" of chicken. On the contrary, the KFC house mark appears prominently..." KFC also alleges that the product is actually called "NEW SMOKY CHIPOTLE CRISPY" (although it is referred to as a new item in press releases as "Smoky Chipotle Crispy"). Mr. Sipiora claims Smoky and New are placed on the same line and Chipotle is on the next line, "thus effectively dividing the two terms." A brilliant legal argument!

In KFC's own stores, we find: KFC® Original Recipe®, which constitutes "trademark use"..."where it is being offered as a brand of chicken"...and..."where the KFC house mark appears prominently." By golly, even the Colonel's 2nd chicken flavor, KFC® Extra Crispy™, is designated with a common law mark TM, "where it is being offered as a brand of chicken"...and..."where the KFC house mark appears prominently." However, according to KFC's legal argument, the 3rd KFC chicken flavor in 65 years, Smoky Chipotle Crispy, is not "being offered as a brand of chicken." [In the same fast food arena, we find: Frisch's® Big Boy®; Yum! Brands Taco Bell® Burrito Supreme® & Taco Supreme®; McDonald's® Big Mac®, Egg McMuffin®, & Filet O' Fish®; Burger King's® Whopper®; Dairy Queen's® Dilly® Bar, etc. are brand marked and item mark.] Attorney Sipiora asserts: "Each of these considerations contradicts any assertion...that KFC's use of "smoky chipotle" constitutes trademark use." On the contrary, it appears that KFC® Original Recipe® and KFC® Extra Crispy™ contradicts Mr. Sipiora's assertion.

The mere fact that KFC does not consider the infringing flavor "as a brand of chicken" is a figment of their attorney's imagination and certainly does not alleviate KFC's responsibility to the public and its' shareholders to act in good faith. Yum! Brands position demonstrates that they will quash another's intellectual property right, and the goodwill associated with our products, by throwing massive amounts of money at consumers. We could never claim to be able to scratch the surface of Yum! Brands deep pockets. Very few companies could. KFC counsel Sipiora, with unlimited financial means, will continue to do the chicken dance on our mark. KFC has already saturated the United States & Latin American market with a never-ending clucking cacophony of Smoky Chipotle Crispy television commercials.

Attorney Sipiora states: "...KFC does not infringe your client's SMOKEY CHIPOTLE mark and is not prepared to accept your demands." At present, KFC knowingly and intentionally continues to use our trademark in return for greed, i.e., short-term shareholder earnings. "Notwithstanding the foregoing, in the interest of resolving this matter amicably, KFC is willing to consider limitations or restrictions you may propose...if such proposals are reasonable." Mr. Sipiora asserts that KFC is not infringing upon our trademark, however he proposes amicable resolution...for what reason...when KFC claims they are not infringing our trademark? Our proposal is reasonable and amicable!

KFC's initial response to our infringement notification that they would deal with us in good faith was nothing more than a ploy to buy time to complete their massive June advertising campaign and sidestep a federal injunction. KFC's corporate greed proves that they cannot be trusted. A trademark infringement lawsuit is being prepared for filing in Columbus' U.S. District Court, Southern District of Ohio.

Disposition: Kraft owns so many trademarks that we cannot even list them all here, including 2 in the name of the infringing product. Kraft Senior Counsel, Global Trademarks, Maureen Smith issued a one line response on June 23, 2006, "we disagree with your position", two months after our certified letter dated April 17, 2006 was received. A copy of a federal Complaint for Trademark Infringement was sent to KRAFT, who responded July 18, 2006, "We cannot imagine that any consumers would be confused by Kraft's use of the variety name "Smokin' Chipotle", but if you have evidence of any product confusion, please let us know." Kraft continues to knowingly and intentionally infringe upon the Smokey Chipotle® trademark. Subsequently, Kraft Senior Counsel, Global Trademarks, Maureen Smith recently continued to push Kraft's corporate weight around where she filed a derogatory opposition, while making false allegations, to our pending Smokin'Chipotle trademark registration.

In December 2007, the Trademark Trial and Appeals Board dismissed, with prejudice, a Petition for Cancellation where Kraft Foods, North America supported Urban Accents, Inc. (listed below).

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.

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.

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. Where the cost of pursuing all trademark infringers is cost-prohibitive, larger corporate entities remain pending review of federal injunctive action. As of October 6, 2006, this product continues to be distributed and available for sale, evincing Goya Foods intentional infringement of our Smokey Chipotle® trademark.

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. Where Mr. Schy maintains at least 4 federal trademark registrations himself, one would tend to believe that he recognizes the importance and value of a registered mark, however, Mr. Schy assigned no value to his continued infringement of our Smokey Chipotle® trademark.

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.

Disposition: Tiny manufacturer Scotty B's Hot Sauces refused an amicable settlement on January 19, 2006 by asserting his BRILLIANT defense (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, 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 our trademark for the second time.

Disposition: Chicago-based Urban Accents, Inc., through attorney Mary Frances Love, an associate of the Washington, DC law firm of Patton Boggs, LLP; unilaterally concluded on March 23, 2006 that Urban Accents was not infringing the SMOKEY CHIPOTLE® trademark and refused to amicably settle Urban Accents' obvious trademark infringement. Subsequent to Ms. Love, Esq. providing very questionable counsel to her client, and dependent upon whether Urban Accents, Inc. will knowingly continue to intentionally infringe upon our trademark, federal injunctive action remains pending review. A recent attempt was made on July 19, 2006 to discuss this matter with Ms. Love. However, she intentionally failed to respond.

In late July 2006, Urban Accents, Inc. through their counsel, Patton Boggs, LLP, filed a Petition for Cancellation No. 92046091, regarding the alleged 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.} One can only conclude that every hot pepper in every salsa, barbecue sauce, hot sauce, and a myriad of other products is generically known as a "smokey chipotle" ?

In December 2007, the Trademark Trial and Appeals Board dismissed, with prejudice, their Petition for Cancellation. Our Smokey Chipotle® trademark was upheld.

Disposition: Pursuant to notification on September 25, 2007, food marketer Monty Fritts discourteously and intentionally ignored repeated requests to cease and desist infringement of our trademark. Where Monty's Gourmet Foods private labels sauces made by other manufacturers and markets the products as their own, Mr. Fritts places no value on the intellectual property rights of others.

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. Pursuant to a subsequent written demand on July 15, 2006, Mr. Russell responded in writing on July 19, 2006 claiming that Meijer, Inc. has continued to act in good faith pursuant to their unilateral and voluntary discontinuance of their confusingly similar Meijer Gold brand label, however, where Meijer, Inc. totally controls distribution of their own private label products, Meijer, Inc. has the ability to immediately remove and re-label their private label Meijer Gold brand product at any time. A physical inspection on July 14, 2006 of several Meijer stores found that their alleged "good faith" claim cannot be taken seriously where the Meijer store shelves still contained the infringing labeled product. There was never a mutual settlement providing Meijer, Inc. indefinite and continued free use of the Smokey Chipotle® trademark. The family successors of the founder knowingly continue to ignore subsequent written requests for voluntary compliance.

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.

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.

Company: Large North American Food Manufacturer & Marketer of Private Label Products for many large Grocery Store Chains in the United States

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.

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.

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.

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. Lately, there appears to be an epidemic of companies that intentionally ignore federal law after notification. Presently, the USPTO and federal law provide no cost-effective remedies of enforcement for intentional trademark violations.

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. Lately, there appears to be an epidemic of companies that intentionally ignore federal law after notification.

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. Lately, there appears to be an epidemic of small companies that intentionally ignore federal law after notification.

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. Lately, there appears to be an epidemic of small companies that intentionally ignore federal law after notification.

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 allegedly infringing mark was discontinued and that the matter was settled.

However, upon further review, the allegedly infringing trademarked product was apparently still being distributed, and therefore not discontinued as originally asserted. Pursuant to Whole Foods Markets continued use, a very miniscule monetary settlement was requested in exchange for a six month phase-out period of their allegedly infringing product.

In a letter dated September 12, 2006, outside counsel for Whole Foods Market wrote in response to our continued request to seek a mutually satisfactory settlement: "...you also threatened to post our client's name on your website as a trademark infringer". The letter continues, "...if you intend to follow through on your threats to disparage Whole Foods Market, be advised that Whole Foods Markets takes such threats very seriously and will take all necessary legal actions to protect its reputation and goodwill, including if necessary the filing of a legal action against you in the U.S. District Court for the Western Division of Texas, Austin Division."

Where we have no intent, whatsoever, to disparage Whole Foods Markets, we find their claim of defamation (which you are presently reading) to be without any legal basis where the truth is an absolute defense. However, we are discouraged that Whole Foods Markets apparently has no issue with potentially infringing upon someone else's "reputation and goodwill". After a couple of subsequent telephone conversations, outside counsel stated that he submitted the request for settlement compensation. Several weeks later no payment arrived, and thus, no settlement achieved. Outside counsel has not returned several messages, voice and e-mail, since the first week of October. As of October 21, 2006, it appears that Whole Foods Markets has chosen to ignore their outside counsel's request for settlement.

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.

Disposition: After making a personal request at an industry tradeshow in March 2006 that the Three Hot Tamales infringing product name be changed, the company's 3 owners verbally agreed to promptly discontinue use of their infringing label, proffering that this product's label inventory was recently depleted. Subsequently it was discovered that their product label, allegedly depleted, remained in distribution as recently as September 2006. A letter requesting that the company cease and desist was ignored. The fact that the owners were intentionally deceitful evinces a complete lack of personal and professional integrity.

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.