Tenth Circuit: Hot dispute over Hatch chile trademark case leads to ruling that documents may be obtained from non-parties without a deposition

Hatch Chile, the real fruit of the gods (photo obtained at https://commons.wikimedia.org/wiki/File:Hatch_green_chile.jpg)
Hatch Chile, the real fruit of the gods (photo obtained from Wikimedia Commons)

It’s an understatement to say that chile peppers are an important part of New Mexico’s cuisine and culture. And, as the Tenth Circuit said last week in El Encanto, Inc. v. Hatch Chile Company, Inc., New Mexico’s “Hatch Valley may be to chiles what the Napa Valley is to grapes.”

Thus, many distributors and restaurants, in New Mexico and elsewhere, advertise their use of genuine Hatch chile products. While plenty of good chile peppers are grown in other New Mexico locales, Hatch chile is the gold standard, or perhaps I should say, the “green & red” standard, for chile peppers. (Colorado also claims to grow chile peppers, but as a patriotic New Mexican, I decline to dignify those allegations with a response). But I digress…

Lately, a private corporation, the Hatch Chile Company, Inc., has attempted to trademark the word “Hatch” for its own exclusive use, an action which was certain to provoke controversy and litigation. And it did. Another chile producer, El Encanto, Inc., objected, as did the Hatch Chile Association. They argued before the Trademark Trial and Appeal Board (TTAB) that “Hatch” should not be trademarked because it refers to a geographical area, and all who sell chile products from that area should be allowed to say so.

They also argued that the Hatch Chile Company, Inc. uses the term in a misleading manner because it actually sells chiles that aren’t from the Hatch Valley. To prove this claim, El Encanto sought to compel documents from Hatch Chile Company’s suppliers in federal court by using subpoenas under Federal Rule of Civil Procedure 45 (which parties to TTAB proceedings are allowed to do).

Hatch Chile Company, apparently wishing to keep the source of its chiles a secret, objected to the subpoena, arguing that El Encanto was required to notice a deposition to obtain the documents, despite the fact that no one really wanted to conduct a deposition. The District Court agreed with Hatch Chile Company, and quashed the subpoena.

Well, on appeal you know that things aren’t going your way when the court refers to your preferred procedure as requiring a “pointless process.” As Judge Neil Gorsuch’s opinion explains, Hatch Chile Company’s argument would require “[m]onths of motion practice followed by a new subpoena and a deposition that one one really wants just to secure documents the relevance of which no one seriously disputes.”

Unsurprisingly, the Tenth Circuit held that El Encanto did not have to notice a deposition to obtain the non-party documents. The case will now return to the District Court to consider Hatch Chile Company’s objections to the scope of the subpoena, and after that dispute is resolved, this dispute will probably be resolved by the TTAB on the merits. I’ll do my best to provide further updates about this case, which is of such obvious interest to all patriotic New Mexicans.


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5 Responses to Tenth Circuit: Hot dispute over Hatch chile trademark case leads to ruling that documents may be obtained from non-parties without a deposition

  1. ” (Colorado also claims to grow chile peppers, but as a patriotic New Mexican, I decline to dignify those allegations with a response).”

    I hereby enter my appearance on behalf of the Pueblo (Colorado) chili pepper, and submit the following evidence: http://www.denverpost.com/2015/08/13/colorados-chile-farmers-promote-pueblo-green-chiles/

    And further, the headwaters of the Rio Grande are in Colorado!

    • Emil J. Kiehne says:

      It’s a shame that Colorado is not original enough to invent its own cuisine.

      • Chili Court’s question: Because “People were bringing chiles from New Mexico to Colorado and passing them off as Pueblo chiles,” he said. “We wanted to make sure that was not what happens.” Denver Post. So which chili is the imposter?

        • Emil J. Kiehne says:

          The Court finds that these alleged statements are hearsay, and lack credibility in any event. Trying to pass off New Mexico chile as Pueblo chile would be like trying to pass off a fine Spanish Rioja as Thunderbird wine, or like attempting to pass off a Mercedes as a Buick, which is something no reasonable merchant would do.

          Also, over the weekend, the Court had occasion to pass through Denver, where it noticed a restaurant advertising genuine Hatch chile, which shows that even Coloradans understand where to obtain the real thing.

          • Your Honor, that Denver restaurant is surely run by a transplant from New Mexico. Here’s better evidence from a true Colorado native:

            “Chef Greg Soukup of Blue Sage Cafe in Colorado Springs says he likes working with Pueblo Chile for the range of flavors they bring to his dishes.

            “They’re as dynamic and flavorful and unique as most of us are in Southern Colorado,” he says.

            In season Soukup serves up a green-chile burger made up of a Callicrate beef patty and jack cheese topped by two roasted green chiles with cumin and lime mayonnaise. In addition he uses chiles in his roasted green chile cream sauce that goes with appetizers on the menu, and serves chiles up raw as garnishes and on salads.

            “They’re versatile and unique. I love how the flavors range from sweet all the way up to screaming hot,” Soukup says. “Hatch chiles are good, but I think the ones out of Pueblo are better.”


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