An appeal to the United States Supreme Court is the latest move in an ongoing battle between the Asian-American band “The Slants” and the USPTO over whether the band’s name is disparaging and should be granted trademark registration or not. After a panel of Federal Appeals Court judges reversed the Trademark Office’s decision rejecting the mark, the Office has now appealed to the highest court in the land in an effort to allow it to retain discretion over whether some marks are too offensive for registration. Time will now tell whether the Supreme Court will accept the case and continue its increasingly active role in intellectual property law.
Donuts have never suffered from a popularity issue. With high demand, supply typically rises to match. And as the competition intensifies, bakeries look for ways to innovate and separate themselves from the pack.
One way that a Terra Haute, Indiana bakery has done so is by going against the norm and producing a square shaped donut. While the square shape may have been original, the name it chose to call these donuts was not. The bakery called itself and the donuts it produced, “Square Donuts.” This lack of originality has led to a trademark dispute with another unimaginative bakery in Valparaiso, Indiana, that is also attempting to call its cornered donuts “square donuts.”
Square Donuts Bakery has been producing the 4 sided donuts since 1968. The bakery has proven successful and expanded to 9 additional bakeries in other areas of Indiana. As Square Donuts expanded, a bakery in Valparaiso called Family Express, also expanded into the cornered donuts market, beginning production of the distinctively shaped pastries. It called them, generically enough, square donuts.
This mimicry led Square Donuts to send a cease-and-desist letter to Family Express over the use of the name in 2006. Family Express responded saying it didn’t believe that it was infringing on any trademark rights to the name. The bakeries carried on with their respective square shaped donuts for several years, until the name conflict flared up again.
Square Donuts filed for a trademark application with the USPTO in 2012 and received a trademark registration in 2013. Family Express filed its own trademark application in 2015, but was rejected based on a likelihood of confusion with the Square Donuts registration. Now, Family Express has filed for declaratory judgment to resolve the issue of who has rights to the square donuts name once and for all.
One might argue that SQUARE DONUTS really just describes the actual product. If you asked someone what they saw when they looked at the cornered donuts, they would likely say a square donut. Descriptive names usually aren’t granted trademark protection because giving exclusive rights to a descriptive name preempts competitors from accurately describing their products. This is why Family Express believes that it is not infringing on any valid trademark rights owned by Square Donuts. It sees the name as merely descriptive and Square Donut’s trademark rights should be canceled.
On the other hand, an argument can be made that it is not a descriptive mark or at least has SQUARE DONUT has acquired distinctiveness. While the donuts may be square, there is a good argument that the square shape of the donuts themselves has acquired distinctiveness as a three dimensional or configuration mark. Thus, arguably you could have both a configuration mark and a word mark representing the square donut configuration mark. Configuration and descriptive marks are more easily protected if steps are taken early on to secure trademark rights. Seeking registration is one of these steps.
These two bakeries will hash it out over branding rights, but the moral of the story is that if you really want a protectable brand name, you should spend some time early on getting sound legal advice so you can take steps to secure your trademark rights before major issues arise challenging those rights.
If you were around in the 1970s when Jaws was first released, you probably thought twice about going into the ocean after seeing the thriller. Even younger generations recognize the iconic shark and have a little fear in the back of their minds. Despite or maybe because of the fear Jaws incited, the movie was a box office hit, becoming the first movie to surpass $100 million in domestic theater ticket sales. With wide viewership and an impact on beach-going behavior, Jaws left its mark on American culture. But that was 40 years ago. Is that culture legacy still relevant? According to the Trademark Trial and Appeals Board, the answer is yes.
This became a debate in 2013, when Mr. Recipe, LLC, which operates a streaming internet channel that provides cooking related content, applied for a trademark on “Jaws” and “Jaws Devour Your Hunger” in the class “entertainment, namely, streaming of audiovisual material via an Internet channel providing programming related to cooking”. The Trademark Office rejected this application based on a likelihood of confusion with the original trademark registration for the movie Jaws, which registered in the class “video recordings in all formats all featuring motion pictures.” The trademark examiner argued that consumers would make some association between the cooking channel and the Jaws movies thus requiring a rejection of Mr. Recipe’s application.
In response to this rejection, the trademark attorney for Mr. Recipe downplayed the modern recognition of the Jaws movies claiming they only obtained a “niche” level of fame. He also pointed out the differences in trademark classes between a streaming internet channel and motion pictures. The examiner didn’t buy these arguments however. The attorney then appealed the decision to the Trademark Trial and Appeals Board.
The TTAB reaffirmed the trademark examiner’s decision, stating that the Jaws movies have permeated general culture and are still parodied to this day. It also took into account the fame of the Jaws mark, instructing that famous marks are given a wider scope of protection. With its options effectively exhausted, the cooking channel will need to take another bite at naming itself.
Jaws is just too famous and culturally relevant to share trademark space with others, at least others providing some type of video or media content. If you have questions about what is or isn’t eligible for trademark protection, please contact the attorneys at Trademark Access. Let our experience protect your valuable brand.