Hooters serves up infringement suit against Raising Cane’s

The popular chain Hooters is asking a federal judge to declare words used to describe its chicken wings as descriptive and not infringing Raising Cane’s chicken wing slogans.

Hooters of America and its subsidiaries filed the complaint for declaratory judgment April 7 against Raising Cane’s USA in the U.S. District Court for the Eastern District of Texas, Sherman Division.

At issue are Raising Cane’s trademarks: “Always Fresh. Never Frozen” and “Always Fresh. Never Ever Frozen.”

Hooters argues the words are descriptive phrases it has used since 2008, before Raising Cane’s acquired the trademarks in August 2009.

Since 2008, Hooters has used the descriptive phrases “Always fresh”, “Fresh never frozen” or related descriptions in menus and other materials, solely to describe the qualities of the chicken wings sold in its restaurants throughout the country, the complaint states.

“One cornerstone of Hooters’ advertising campaign and appeal to its customers is the Hooters’ chicken wings, marketed and sold as Hooters’ ‘Officially World Famous Chicken Wings’ and including, but not limited to, the ‘Original Hooters Style Wings,’” the suit states. “These Hooters wings consist of fresh chicken wings which are not frozen prior to being sold to Hooters’ customers.”

On Sept. 10, 2013, counsel for Raising Cane’s notified Hooters that its use of the descriptive phrase “Fresh Never Frozen” infringes the trademarks and constitutes unfair competition.

Raising Cane’s demanded Hooters stop using the words in its marketing, prompting the restaurant chain to seek the declaratory judgment.

“Declaratory relief will serve to resolve a real and immediate controversy as to Defendant’s legal rights with respect to the phrases,” the complaint states.

“Absent a declaration of such rights, Hooters will suffer imminent injury, as it is now using the allegedly infringing descriptions on menus throughout the country, and considering increasing the scope of its usage to also describe the qualities of its hamburger patties.

“As such, Hooters is now at risk of being sued for infringement and unfair competition by Defendant over use of the Marks, including a risk of damages and a potential injunction which could force Hooters at considerable expense to change menus in its restaurants and advertising and marketing materials in each of its geographic regions.”

Attorney Elizabeth DeRieux of the Gladewater law firm Capshaw Derieux represents Hooters.

Case No. 4:15-cv-00237-ALM