Sprinkles Cupcakes claims trademark infringement over its cupcake dot

The news outlets were abuzz today about the trademark infringement lawsuit filed by California cupcake maker Sprinkles Cupcakes against rival cupcake maker Famous Cupcakes (Reuters news report here).

The lawsuit, filed on Thursday, claims that Famous has appropriated Sprinkles’ signature “nested circle design” trademark into its packaging, store décor, and website.

Sprinkles sells a wide variety of cupcakes each of which are topped with a signature dot that functions as an indication of the particular flavor of the cupcake. Sprinkles’ flavor card showing which dots correspond with which flavor can be viewed here.

However, Sprinkles was able to overcome the PTO’s two refusals to register the design on the Principal Register (a non-distinct configuration refusal and an ornamental refusal) by changing the basis of the application to Section 2(f) and providing evidence that the mark had acquired distinctiveness (i.e., customers had come to associate the dot design with Sprinkles). Sprinkles’ "nested circle design" for "bakery goods" was registered April 3, 2007.

While a quick view of Famous’ website didn’t reveal any particular appropriation of Sprinkles’ “dots” that I could see, Famous, which has its own unique group of flavors (here), does offer its customers the choice of various “toppers” on their cupcake. Is Sprinkles claiming that no other cupcake makers can put any kind of candy heart or other design in the center of a cupcake?

Famous Cupcake's Toppers