A Controversial Interview with Jim Duffy Part 3 of 3
You heard what Jim had to say about the Infinity pepper, the Naga Viper pepper, and Guinness Book of World Records. Weird things are not just happening in the UK. One of the United States most recognized chile authorities has done some very questionable stuff too. You might not believe what you are about to hear, but the truth must come out. Once you hear this, you will never look at the chilehead world the same way again. You most definitely will not look at this individual in the same light again for sure.
Your thoughts are welcome.
Jim Duffy’s Refining Fire Chiles
www.superhotchiles.com
Great 3 part interview. It is a wonder that Jim stopped at 3 parts. He could of made a full length movie about his peppers. He is the real deal. Even after all this publicity he still focuses on the Youth centers that started all this Pepper Growing. My Hats off to all of you. I’m impressed.
Het everybody Popular Science magazine interviewed me over phone today about record and superhot chiles. I referred them to Marlin to get more info on our testing. They also now have a copy of requirements Guinness sent us that we all know Naga Viper did not comply with. Will wait and see what they write.
I read an article where they said they used the name Mexican Scoripion because the name Trinidad Scorpion was copyrighted. Can anyone explain what this means? Do hot sauce makers have to get permission to use Trinidad Scorpions? Can you copyright a pepper? This is confusing to me.
Awesome series of interviews Buddah and Jim.You did a killer job.I will continue get seeds and stuff from.I firmly believe in sticking with good honest ethical businesses.I really like what Jim does with his charities and all.I will gladly buy some salsa Jim.Buddy make some SALSA PLEASE!!I’ll be glad to help your cause.I also 😆 when Buddah talked about Cajohn’s Scorpion Puree that I would use a bottle in a year.I say HELL YEAH I want a bottle of that bad !! Sounds WICKED!!I love me some Scorpions tasty lil :_dancingdevil: they are.
Hi Jen,
Cajohn says copyrighting the name of a plant variety cannot happen. Maybe over 100 years ago Tabasco did it but no more. That’s why CaJohn could not get Holy Jolokia trademarked. Because Jolokia was in the name. So as a far as I know any kind of species or variety of plant or animal cannot be claimed. But the Trademark people will take your money and application anytime you want to give it to them.
That would be funny, I’ll be patiently waiting for a “cease and desist” letter…. Hey Jim, I’m calling dibs on the limted run of “SoCal Duffy Douglah™” :_redpepper:
Thanks for explaining. So they couldn’t copyright the name Trinidad Scorpion Salsa, but they could copyright the name New Mexican Scorpion Salsa?
Hello Jen,
Trademark and copyright are two different things. If you own the rights to Jen Scorpion Salsa nobody else can sell a salsa named Jen Scorpion Salsa. Thats copyright I believe. A slogan, name, logo, etc can be Trademarked. It then cannot be used by anyone without your permission in any way shape or form. New Mexico Scorpion would be difficult because name of a State and a plant variety. Probably could not get a Trademark. But it could be copyrighted. Does this make sense? Just different ways to protect businesses and also have more fees to pay agencies.
Your getting some next week :_bananadancing:
Maybe even a fresh one when I check plants this weekend! Did you send bottle of 1498 to Editor of Popular Science Magazine? By the time he got done interviewing me he wanted to taste Trinidad Peppers! I must be a good salesman.
Oh, maybe the word they used in the article was Trademark then, not copyright.
Yeah, I found the discussion on it and the word was Trademark, not Copyright. I guess someone in Fort Worth filed for a Trademark on Trinidad Scorpion? Maybe they should have just made up a fiery name for the salsa and then listed Trinidad Scorpion in the ingredients, it would be much less confusing. I could use a good Scorpion Salsa, but I wouldn’t pay $25 for it.
E mail me Jen
jp*****@co*.net
Maybe I can make you a large batch and ship it to you. For now try Johnny’s 1498 Scorpion hot sauce no faming but good Scorpion taste!
I just got the Heartbreaking Dawn’s 1498 sauce last week, it’s one of my favorites. I also have Dragon’s Blood Elixer’s For Whom the Bell Tolls, that one has a 9 Pepper Mash and I think Buddah said that there are both Trinidad Scorpions and 7 Pots in it. I’ll email you, I want to ask you about your powders too. Maybe I could buy the salsa and the powders. I’m not sure when you’ll have them.
Smokey Chipotle
What about the red savina? That always had a trademark.
Jim knows about the story on that one Blane. He told it to me a couple of months ago. I am too senile to remember all the facts, so I am sure he can tell you.
Buddah, do you have a translator button on this site?
He chats like Justin, that is why I like the Machine so much. 🙂
To answer your question Blane. Red Savina never had a Trademark. Thats why people were free to make sauces and products with it in the name. Red Savina had a Plant Protection Patent. Which means you can only sell seeds and plants with Frank Garcia’s permission unless you resell the seeds from one of his sources that is. A Federal Plant Protection Patent was designed to protect the rights of large seed companies that produced new varieties or Hybrids. For Example Monsanto has the patent on Round Up Resistant Soybeans. These can only be grown by purchasing seed from an approved source from Monsanto. A plant protection patent costs over $6,000 and now unlike before you have to have 3 years of growth records before applying. And this Patent can only be enforced in the U.S. Hope this answers your questions.
Thank you
I think Jim would look good rockin’ a short mohawk! 1/2″ with the rest wet shaved.
A simple clarification…Copyrights cover published material in various media/photos/printed matter. Trademarks and service marks are intellectual property rights or “brands”. Patents generally address products and unique product development processes.
A phrase incorporating a proper name can be trademarked, however, the phrase cannot be merely descriptive or its usage considered generic.
Where the proposed trademark phrase is suggestive of the qualities of the product or is a uniquely created name, the trademark application has a more likely chance of succeeding even where a proper name is used in the phrase.
Smokey Chipotle(R) and Smokin’ Chipotle(R) are prime examples in this industry and specifically in trademark Class 30 (the federal government’s product classification for sauces, salsas, spices and ingredients used in making similar products).
When the Smokey Chipotle(R) trademark was submitted in 1995 it was the 1st ever incorporating the word chipotle (which helped) and also at that time almost no one (in mainstream America) knew what a chipotle actually was. While the Smokey Chipotle(R) trademark has often been misrepresented and challenged as descriptive (since chipotles are smoke-dried), the trademark is protected due to its longevity and continuous use and has successfully defeated several challenges at the U.S. Trademark Trial and Appeals Board. In other words, unless the phrase Smokey Chipotle(R) is determined to be generic, which will not happen because the spice itself, i.e., chipotle, is a proper name and was already excluded from the trademark approval in the application process, the trademark cannot be canceled.
Historically, when Chuck Evans introduced his Smokey Chipotle(R) Pepper Sauce, the phrase was coined to suggest to unknowing consumers that the sauce had a smokey/smoky flavor. While the phrase was descriptive as well, the fact remains that the sauce product was the 1st American-made chipotle sauce, and importantly, no one knew at that time-which is the important legal starting point of uniqueness, that smoky was actually descriptive of aroma and flavor of the chipotle spice. The name suggested its contents to the unknowing consumer, and in this case, was also descriptive of the contents.
The reason Tabaco(R) was granted their trademark was that it was grandfathered in by the Lanham Act in 1906. If the McIlhenny’s trademark would not have been grandfathered in {since it was used in commerce continuously since 1868(?)} and where there was also a 1917 federal appellate court decision in a Louisiana federal case that was questionable as to the McIlhenny’s material misrepresentation of the facts of their usage claim, which questionable appeal was issued in favor of the McIlhenny’s, the single word Tabasco(R) would never be granted a trademark. This federal appellate court’s reversal of the lower trial court’s decision denying the trademark essentially permitted the Tabasco(R) trademark protection under the Lanham Act.
Summarily, the McIlhenny’s usage of the word Tabasco(R) preceded this country’s trademark laws, therefore protection was granted for intangible property rights and perceived customer values of branded products where companies spent money to develop brand recognition and customer loyalty.
As it is today, a manufacturer can list tabasco peppers/chiles as an ingredient, they just cannot call it a “Tabasco” sauce on the label.
The Smokey Chipotle(R) trademark will also continue in perpetuity. To be considered generic, the phrase Smokey Chipotle must be the common use for the spice itself. No one orders/uses smokey chipotle as an ingredient, because they order/use chipotle as the ingredient.
Therefore, Chuck’s phrase cannot be considered generic and this weak argument will always fail, as it did when the Smokey Chipotle(R) trademark was challenged by Urban Accents and Kraft Foods about 5 years ago.
Interestingly, Kraft also challenged Smokin’ Chiptole(R) about a year later and lost that challenge as well which was doubly rewarding where Chuck writes all of his own briefs and has defended the Smokey Chipotle(R) trademark more than 120 times since 1995 reaching settlements with most violators. Where this mark is actively protected, it is common knowledge throughout the intellectual property rights legal community that it is defended and an ongoing violator’s list has been created online that companies generally prefer to stay away from. The result has been almost no infringement activity in the past few years.
CaJohn’s Holy Jolokia is not dead yet as far as I know because I believe that John challenged the trademark examiner’s denial. The primary issue with the denial was that it was “allegedly” confusingly similar to another trademark phrase. The secondary issue was incorporating a proper chile name, i.e., Jolokia, in the phrase, but that can be resolved simply by agreeing to exclusion.
Many people do mot understand trademark law and its nuances. More importantly, as a property right, the mark increases in value as to its exclusivity and longevity. A pet peeve of Chuck’s is someone who attacks the owner of a trademark for defending THEIR mark, protected under federal law, and attempting to reach a settlement for stealing the property of the trademark owner.
Even if the theft is inadvertent (not intentional), the fact remains that it is the responsibility of the person who infringes upon a trademark to make sure that a name they wish to use is not protected. It takes about 2 minutes to check a name availability through the USPTO (Unites States Patent & Trademark Office).
If the property right owner is fortunate to develop a product that becomes nationally recognized the property right of the name becomes a valuable intangible asset, but this is not a simple or short-term proposition. While I cannot dispense legal advice, even the education contained in this commentary has the value of years of extensive personal experience in defending infringements and knowledge that may help someone understand trademark law a little better if they are considering protecting a unique property right that may have value in the future.
So what happens when they won’t let you Trademark the name of your sauce? You can still use the name, right?
Yes, you can make anything you want and you can use any name you want as long as it is not a registered trademark in the class or category that your products fall under. Usually you only trademark a brand name that is really unique or where the product is totally distinct. Not just one of many thousands of salsas, for example, unless you did something that is of distinction: a new ingredient added that you think will become mainstream, i.e., Smokey Chipotle(R), where Chuck anticipated that chipotle would become a major spice before anyone really had even thought about it (other than in Mexico where chipotles were packed in small cans of tomato sauce (adobo) as a use for red ripe jalapenos that were no longer of value when most of the jalapeno crop had to be green and was sold to the U.S. to top nachos at ballparks, snack bars, etc…or if you make a salsa that makes the other sex instantly fall in love with you, a love potion salsa (!) that really works (just a goofy example to make a point, but where someone would make more than a ton of money). These are the reasons to “brand” your product.
Example: You could use the name “Bang My Drum” for a hot sauce since sauces are in a different class than a a trademark holder for the same name of a musical instrument which would be in a totally different class of commercial goods, i.e., the name of a drum set.
There is only one exception and that is when the trademark is an historic mark-recognized and protected, i.e., the big boys, including Coke, McDonald’s, Pepsi, Disney, Frito-Lay, Heinz, Nike, Warner Bros, Tabasco, French’s, Kleenex, Ford, General Electric, Jack Daniels, Budweiser, WalMart’s, etc. and where the manufacturer has spent enormous sums of money (and can easily prove that their products are mainstream and available in every market area in the country) advertising their brand over many, many decades.
Denial by the trademark examiner just means that they will not accept it for a trademark (although you can challenge the denial if you have a good legal argument)-in other words you just will not have protection under federal trademark law —- however, if your product is first sold in different markets/different states and someone else comes along and even if they get a trademark for the same name or one that is similar and they send you a cease and desist letter, you have a legitimate defense and claim of first use and continued use to sell your product in the markets/states where you 1st marketed your item.
You may have to produce sales receipts from accounts to evidence your claim, however, the trademark holder will then have an obstacle for market areas where you are already selling your product.
Regardless of existing market areas, once notified, any additional markets (even market areas the trademark holder is not currently selling in) will fall under their trademark protection. Once notified, everything freezes so-to-speak. Existing markets prior to notification are defensible, but not new market areas.
This is a generally recognized concept of first use, however, you may someday have to produce sales evidence if you decide not to mark your trade name or if you fail in your trademark application and someone succeeds later. Yes, this does happen on occasion-every trademark examiner is different and the rules/law is applied subjectively.
You can also protect yourself in your home state for first use by filing with your Secretary of State for use of a trade name. This is not really necessary if you have trademarked your trade name under federal law, although most attorneys would suggest you file a trade name in your state-although to me it seems redundant.
This is preventative evidence of first use and your intent to market your products in your home state. Of course, first use only applies if no mark is federally registered before you begin selling your products.
Always do a search at the USPTO before naming a product and printing labels.
So Ronnie Walley applied for Trademarking name of a plant variety called the Trinidad Scorpion. CaJohn says this cannot happen. Ronnie applied under category of fresh chiles and sauces. I don’t see it happening for the chile since it is a known variety. What are your thoughts on this Aztec Emperor??
Jim don’t play that! Jim will not dye hair or cut it weird etc. etc. I don’t have to look strange to sell my chiles. I just talk a lot and thats it. Sorry Sam……..
If he gets approval from the USPTO for a trademark application, in all probability he would have had to apply for 2 different classes since you said he applied for fresh chiles and sauces, where a sauce is a prepared food item and is in Class 30. To brand fresh chiles it would be under a different USPTO class, which I do not know offhand.
The issues, and in my opinion I think that they are insurmountable, is that USPTO will require him to disclaim the word “Trinidad” because it is a proper name/place, then the argument will eventually becomes does the phrase meet the requirements of being novel or suggestive.
However, before he even gets to that issue there a larger problem because the variety is “commonly known” as Trinidad Scorpion, therefore, the phrase is of a specific and commonly known variety of chile, i.e., it is generic.
Of course, he cannot use a phrase that is commonly used and where in the category of fresh chiles they are already known as Trinidad Scorpion. As to the sauces, the same logic applies. I do not see him getting approval under any circumstance.
If he somehow gets approval, then the registration will be presented for publication and anyone can object to the trademark registration. One just has to pay attention to the trademark examiner’s approval date and more specifically, the publication date posted on the USPTO website. I think he will spend the registration fees for naught.
I do not know much about plant protection patents, but if a chile variety is already recognized specifically in the chile community by a common name, then I am certain that a great many educators, botanists, agriculturists, growers, manufacturers, etc. will probably argue to the Department of Agriculture(?)to deny a plant protection patent for a plant variety that already exists.
HA,HA,HA….Nothing like a little light reading!
Sorry-more light reading…I like to be accurate and my facts unimpeachable. I was kind of sucked into it many years ago when I could not afford an attorney to file the registration or afford one who was competent enough to do what was necessary when many (around 120) infringements occurred over a 10 year period.
When I started to deal with the corporate intellectual property attorneys, the whos who of the upper echelon of trademark attorneys hired when a large corporation starts to stomp all over a trademark holder, and departments of attorneys who do nothing all day but work on their companies property rights, I decided to become knowledgeable in this area of law and have achieved some notoriety in the field, and even though I am pro se, I was relentless.
In order to protect my “branded” property I had to be or I could lose my property rights if not zealously defended. This is always raised when a company challenges your willingness to protect the trademark-one of the reasons I began my Trademark Violator’s List.
A short list of the many corporations that have ceased and desisted, many voluntarily, include: KFC (Kentucky Fried Chicken), B&G Foods (Ortega), ABF America (Durkee’s), Bird’s Eye Foods, Crate & Barrel, Trader Joe’s (2x), Whole Foods, Reckitt-Benckiser (French’s & Frank’s RedHot), Jack-in-the-Box, Sara Lee, Kroger Company, McIlhenny (Tabasco), El Pinto, Quizno’s, Mad Will’s, Frontera Foods, Bimbo Foods (Mexico), Garden of Eatin, and many others.
Even Kraft Foods, which has several property rights legal departments for North America and for their divisions throughout the world, terminated their product infringements, although they aggressively filed cancellation proceedings against me…all of which they lost to a non-lawyer.
Further, I recognize that most people don’t really understand the why and why nots because trademark law appears simple but like all laws, has its own peculiarities and subject to much interpretation. Usually the business owner thinks they know about property rights, and then get(really)upset when they are found infringing a registered trademark.
Of course we all have to deal with many types of contract law, business laws, banking, insurance, leases, compliance with labeling requirements, inspections based on FDA food safety laws, workers compensation laws, local, state, and federal tax laws, and other laws.
Lol translator wth? My typing on here sometimes sucks.When your Blackberry has small buttons and you have fat fingers.It doesn’t work out too good sometimes.We don’t need a translator.I need bigger buttons. 🙂
What if it was for a fundraiser for the youth shelter? Come on buddy, YOU CAN DO IT! Put it out there that you will cut a ‘hawk and dye it green and wear it for a week (no hats), if $500 total is donated. It’s one week.
Not happening!!! Focus on the Contest youngster!
You know Sam I am having a hard enough time finding a lady so last thing I am going to do is make myself look more weird. Why don’t you cover your whole body in Charcoal dust and then you can call yourself Mr. Smokey Chipotle!
you trying to get Sam in trouble with the trademark police?
Jim, I wanted to say thanks for the interviews, Very educational. I have been growing the bhut jolokia for several years along with some other hot varieties. As you know I received seeds from you this year and I have seedlings up of all of them that you sent.(great germination rate by the way) I am excited about the 7-Pot Jonah and Douglah and Trinidad Scorpion along with the others that you sent me. I would be happy to send you some of my peppers later in the year if you want samples from the midwest. Thanks for your work! Tim – Volcanic Peppers – Omaha, NE
Chuck, it’s always interesting when you stop by the blogs. 🙂 Don’t be such a stranger!
Jim, you need to hang with me, then. I can be your wingman, and then we can get you a woman. 😉
LOL! I just now noticed Sam’s avatar. 😉 I’m stayin’ out of this one. 😛
Tim, welcome to ILIS. If you ever wish to video document your Chile growing experience, we would be more than happy to post it.
😆
Scott, Jim will think you will be buying him wings. :_retarded:
Thanks, I might pick your brain on that. I am attempting to plant some of my peppers a month early, using black and clear plastic sheeting, to see if I can get an earlier yield. I plan to document the process and post to my blog. I will be taking incremental pictures but maybe a video taken over a period of time would be cool too.
I don’t have much of a brain left to pick at. :angryturnip:
No comment Bwahhahahahahahahahahhahahahahahahahah!!!
Great reviews!