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CASI Inc. Vs Tolbert Heirs |
History of Legal Suit – Use of “Chili Appreciation Society International”
After receiving a letter in July, from the heirs of the late chili author Frank X. Tolbert threating legal action against CASI using the words “Chili Appreciation Society International”, CASI filed a suit on September 1986 against the heirs of Tolbert. San Antonio, Texas, attorney Ann Livingston said the declaratory judgment filed in state court holds that her client, CASI Inc., owns the trademark to the words -- registered with the state. Meanwhile, Tolbert's heirs claim a federal trademark on the same four words. "Their (the Tolbert heirs') lawyer wrote us a letter in July threatening to sue us, claiming to have ownership of the trademark," Livingston said.
Dallas attorney Stephen Grimmer said that's true. He said that in October, on behalf of Tolbert's wife, Kathleen; daughter, Kathleen Tolbert Ryan; and son, Frank Jr., "We filed a motion to transfer the case to a Dallas federal court."
The case ended up in the courtroom of Lucius D. Bunton III, Chief Justice of the Western District of Texas. On April 21, 1988 judgement was made by Judge Bunton and he entered the following findings of facts and judgement in favor of CASI, Inc. :
Judge Bunton states in his Conclusions of Law:
After receiving a letter in July, from the heirs of the late chili author Frank X. Tolbert threating legal action against CASI using the words “Chili Appreciation Society International”, CASI filed a suit on September 1986 against the heirs of Tolbert. San Antonio, Texas, attorney Ann Livingston said the declaratory judgment filed in state court holds that her client, CASI Inc., owns the trademark to the words -- registered with the state. Meanwhile, Tolbert's heirs claim a federal trademark on the same four words. "Their (the Tolbert heirs') lawyer wrote us a letter in July threatening to sue us, claiming to have ownership of the trademark," Livingston said.
Dallas attorney Stephen Grimmer said that's true. He said that in October, on behalf of Tolbert's wife, Kathleen; daughter, Kathleen Tolbert Ryan; and son, Frank Jr., "We filed a motion to transfer the case to a Dallas federal court."
The case ended up in the courtroom of Lucius D. Bunton III, Chief Justice of the Western District of Texas. On April 21, 1988 judgement was made by Judge Bunton and he entered the following findings of facts and judgement in favor of CASI, Inc. :
- Plaintiff, C.A.S.I. -- Chili Appreciation Society International, Inc (*CASI) is a corporation organized under the laws of the state of Texas. CASI uses "Chili Appreciation Society International," "C.A.S.I." and "CASI" as service marks to denote services it provides relating to promoting, organizing, and conducting chili making contests and events promoting chili...."
- That the Commissioner of the U.S. Patent and Trademark Office shall certify the ownership of this registration in the name of CASI and made the appropriate entries upon the records of the patent and Trademark Office and shall be controlled thereby."
Judge Bunton states in his Conclusions of Law:
- "The law is well settled that future use of the marks at the issue in this case by any person or enterprise, other than the Plaintiff will be subject to the requirements of the law relating to secondary meaning and likelihood of confusion..."
- Judge Bunton's conclusion refers to the Lanham Act : "Section 1125(a) of the Lanham Act, which provides civil liability for using a mark in commerce environment that is "likely to cause confusion" as to the affiliation or connection of the mark with another trademark, or as to the origin or sponsorship of the mark by another person."
