Over the past half-dozen years, cease and desist letters were sent to many business entities who infringe the Smokey Chipotle® or Smokin’ Chipotle® trademarks.

An amicable and mutually-agreeable settlement is often achieved allowing time for manufacturers to deplete label and finished goods inventory, or in the case of food-service establishments; to terminate advertising campaigns and change printed menus and communications media.  Entities reaching such agreements are not listed where non-disclosure is requested in the settlement agreement.

However, this Trademark Violators list comprises RECENT TRADEMARK VIOLATORS as of 2011-2012 that refused a mutually amicable settlement agreement.

1.  SUBWAY Serviced by Franchise World Headquarters, LLC

DAI (Doctor’s Associates, Inc.)

Fred DeLuca, President

325 Bic Drive

Milford, CT  06461

Company:  World’s Largest Subway Submarine Sandwich Franchisor

Infringing Product(s):  Originally, Subway’s Smokey Chipotle Cheesesteak Sub, subsequently on U.S. Television advertisements: Subway’s Smoky Chipotle Chicken & Cheese Sandwich

Subway’s and Jessica Johnson, Attorney-Subway Global Contracts & Advertising, failure to be truthful is most perplexing where Subway knowingly and intentionally infringed our Smokey Chipotle® trademark  and directly lied about advertising their infringing Subway sandwich in writing (Subway, DAI letter dated November 15, 2012).

Disposition: Subway and Doctor’s Associates, Inc. (DAI) engaged in a lengthy letter-writing campaign of denial after receiving a November 1, 2012 cease and desist letter asserting that Smokey Chipotle® was not being used to name Subway sub sandwiches in the United States, however, asserting that such protection did not extend to Australia.  After repeatedly insisting that Subway was not advertising a Smoky Chipotle sandwich in the United States, to wit: “DAI does not offer the “Smoky Chipotle Chicken Sub” or the “Smokey Chipotle Saucein the United States.” [November 15, 2012 Subway letter], Subway Smoky Chipotle Chicken & Cheese Sandwich commercials aired on local and national radio and television media throughout the end of December 2012 and January 2013, advertising the Subway Smoky Chipotle Chicken & Cheese Sandwich as the Subway featured foot-long of-the-month for January 2013.

Subway’s January 7, 2013 letter stated: “Subway Franchisee Advertising Fund Trust Ltd. has decided to stop using the adjective “smoky” from being directly used before the word Chipotle in its advertisements…”SFAFT plans to phase out its use of the adjective “smoky” before all mentions of Chipotle before February 15, 2013.”

The LESSON:  Most importantly, Jared needs an honest employer; and certainly IF the public actually believes the unlikely SUBWAY commercials he starred in for years!  After flat-out denying Subway’s use of Smokey Chipotle in the United States and the infringement of our Smokey Chipotle® trademark, Subway and Jessica Johnson ADMIT to using the trademark in the United States.  It never ceases to amaze about the complete lack of ethical integrity when it comes to property rights by United States titans of industry and international corporations.  It is no wonder why the world continues down the dire straits path it is on—directly the fault of dishonest political factions and ethically-bankrupt corporations , i.e., Subway!

2.  JBS Swift Premium Meats

Nick White, Inside Corporate Counsel

1770 Promontory Circle

Greeley, CO  80634

Company: America’s Largest Beef & Pork Meat Processor and Purveyor

Infringing Product:  JBS Swift Premium Smokey Chipotle Dry Rubbed St. Louis Style Pork Spareribs

Disposition:  JBS Swift Premium Meats, through inside corporate attorney Nick White, Esq. refused to respond to the September 10, 2012 cease & desist letter.  Pursuant to many telephone messages, Nick White finally left a message that JBS would discontinue their infringing product name as of December 31, 2012, however, he stated that he would not respond to the cease and desist letter in writing. JBS knowingly and intentionally continued to use the Smokey Chipotle® trademark without agreement or license, i.e.,  knowingly infringing our trademark.  Subsequently, it was determined that JBS Swift Premium Meats has had many issues with tainted and recalled meat products and it is policy for legal counsel, i.e., Nick White, to not address legal matters in writing. Certainly, it is important that MONTEZUMA Brand Smokey Chipotle® Meat Grillin’ Spice Rub product in no way reflect the poor cleanliness, and apparent unhealthy and unsanitary practices; nor be associated in any way, with JBS Swift Premium Meats.

3.  Mizkan Americas, Inc. – Settlement Agreement Achieved August 2014

Perla Kuhn, Attorney & Partner @ Edwards Wildman, 750 Lexington Avenue, NY, NY  10022

1661 Feehanville Drive, Ste. 300

Mt. Prospect, IL  60056

Company:  Mizkan Group is one of the world’s largest food manufacturers headquartered at Handa, Aichi, Japan

Infringing Product:  Mizkan El Diablo Smokey Chipotle Hot & Spicy Mustard

Disposition:  Mizkan Americas, one of many world-wide divisions of the Japanese conglomerate, refused to reach a mutually amicable settlement agreement for infringing a product in the same category Class 30 which protects our Smokey Chipotle® trademark.  Mizkans, through their arrogant outside counsel, Perla Kuhn, dictated in a curt telephone call, that Mizkans America would stop using the trademark name, however, she states that Mizkan would not cease and desist the continued sale of existing  infringing mustard product in warehouse and store inventories.  Interestingly, on Mizkans website, i.e., their “Vision”, which is several pages in length, goes into great detail about Mizkan Japan’s Corporate Philosophy, Culture, Ethics Standards.  Specifically, Mizkan states: Same as managing all corporate assets, rights, and information property, we respect those of others. We never infringe upon nor abuse other’s assets, rights, and information.  Mizkan, Mizkans America, and Perla Kuhn of Edwards Wildman, are quite simply, dishonest.

Subsequent Issue October 2013:  The infringing product was found being placed on shelves nearly a year later. Mizkan and Perla Kuhn were contacted and Mizkan claimed that their distributors were at fault.  Regardless, Mizkan Americas completely failed to enforce their previous unilateral claim that Mizkan was to discontinue the infringing label.

4.  Chili’s Grill & Bar Restaurants

Brinker International

6820 LBJ Freeway

Dallas, TX  75240

Company:  International Restaurant Franchisor

Infringing Product: Chili’s Smoky Chipotle Fajitas

Disposition:  A cease and desist letter was sent to Chili’s on October 10, 2012.  After no response from Chili’s, another letter was sent.  Finally, months later Chili’s VP and Asst. General Counsel Bryan McCrory responded that a consumer would not be confused on whether Chili’s used a “smoky chipoptle” sauce that was not bottled for its fajita product. However, Chili’s failed to address that a likelihood of confusion exists when advertising that their product is made with our trademarked Smokey Chipotle® sauce, which name is also our intellectual property right.  Bryan McCrory wrote that Chili’s would discontinue the infringing name when it changed Chili’s Restaurants menus and on Chili’s time frame, regardless of stealing property that does not belong to Chili’s Restaurants or Brinker International.

5.  Quizno’s SubsREPEAT OFFENDER

1001 17th Street, Ste. 200

Denver, CO  80202

Company: U. S.  Sandwich Restaurant (Submarine) Franchisor

Infringing Product:  Quizno’s Smoky Chipotle Turkey Sandwich.  It is important to address that Quizno’s has infringed the Smokey Chipotle trademark on numerous occasions over the past decade.  Quizno’s Subs never responds to our certified cease and desist letters, however, Quizno’s eventually drops the infringing name from its menu…only to resurrect a new sandwich name which infringes our property rights.

Disposition:  Quizno’s business practices and corporate ethics leave much to be desired and are probably the reason why their financial situation is in dire straights.  A cease and desist letter for this latest infringement was sent February 3, 2012.

6.  Panera Bread

6710 Clayton Road

Richmond Heights, MO  63117

Company:  U.S. Bread & Sandwich Restaurant Chain

Infringing Product:  Panera Sierra Turkey Sandwich made with Smoky Chipotle Mayonaisse

Disposition:  A cease and desist letter was sent May 31, 2011.  Panera Bread failed to respond.  It is believed that the infringing product was removed from the menu.

7.  Robert Rothschild Farm

Reached Agreement with Previous Ownershowever, New Ownership failed to HONOR Agreement & continues to ignore subsequent requests to terminate infringement of trademark.

3143 E. US Highway 36

Urbana, OH  43078

Company:  U.S. Specialty Food Distributor (no longer manufactures)

Infringing Product: Robert Rothschild Farm Anna Mae’s Smoky Sweet Chipotle Sauce

Disposition: A letter was sent to Robert Rothschild Farm on January 15, 2012 addressing the previous agreement where Robert Rothschild Farm agreed to discontinue the infringing name.  An October 1, 2012 letter was sent where no response was made by Robert Rothschild Farm.  A November 11, 2013 Cease & Desist Letter was mailed and a follow-up letter was sent December 30, 2013.  Where Robert Rothschild Farm is presently owned by an inexperienced investment group it is apparent from the deterioration of the Robert Rothschild Farm brand that it does not have the managerial capability to properly  operate a specialty food distributorship.  This matter remains pending where the infringing product remains for sale in retail stores.

8.  Gilly Loco Salsa

10655 Montgomery Blvd. NE

Albuquerque, NM  87111

Company:  Regional Salsa Manufacturer

Infringing Product:  Gilly Loco Smokey Chipotle Salsa

Disposition:  Owner Laura Lopez agreed to discontinue the infringing label in March 2012 at the Albuquerque Fiery Foods & BBQ Show in 2012.  At the same subsequent venue in March 2013 she continued to flaunt the infringing label.  On March 10, 2013, a certified cease and desist letter was mailed, as well as, several follow-up letters; all of which she failed to address.  It is disturbing that Laura Lopez lied to me personally about resolution of the DIRECT infringement and copying of my Smokey Chipotle® salsa and property rights.

9.  Organic Prairie

1 Organic Way

LaFarge, WI  54639

Company:  Agriculture Cooperative Manufacturer/Distributor of alleged organic products

Infringing Product:  Organic Prairie Smoky Chipotle Beef Jerky

Disposition:  Failed to address cease and desist letter sent June 10, 2013 and subsequent letters. NOTE that this is the second infringement over the past half decade, both of which have been ignored by Organic Prairie, which leads one to question the ethical integrity of the assertions made regarding their products.

10.  The Spice & Tea Exchange

407 Marshall Circle

St. Augustine, FL  32086

Company:  U. S. Specialty Food Importer/Distributor

Infringing Product: Smoked Chipotle Salt

Disposition:  Attorney Breton Permesly at Kaufman Gildin Robbins & Oppenheim LLP responded on April 30, 2013 that TSTE is not infringing our Smokey Chipotle® or Smokin’ Chipotle®  trademarks.  He failed to respond to our subsequent letter as no resolution has been achieved.

 

ET AL, … In 2011, a number of smaller business entities infringed upon the Smokey Chipotle® or Smokin’ Chipotle® trademarks, subsequently failing to reach a mutually-amicable settlement agreement:

Cape Fear Salsa   5828 Oak Bluff Lane   Wilmington, NC  28409

Ransom’s Jelly Company   200 Loxley Lane   Murfreesboro, TN  37127

Carmie’s Kitchen, Inc.   210 Windco Circle   Wylie, TX  75098

Chuao Chocolatier   2345 Camino Vida Roble   San Diego, CA  92011

980 Group Sauces   179 Civitas Street   Mt. Pleasant, SC  29464