Friday, October 15, 2010

Mélange of Trademark Stories

The Cupcakery Lawsuit Settles
Gourmet cupcake bakery The Cupcakery quietly settled its lawsuit (previous blog posts here and here) against former employee Andrea Ballus and her cupcake bakery Sift: A Cupcakery. See The Cupcakery, LLC v. Ballus et al, Case No. 09-cv-00807 (D. Nev.). Click here for the Court’s Order dismissing the case.

While no terms were disclosed, it would appear that part of the dismissal involved Ballus withdrawing her earlier filed trademark application for Sift: A Cupcakery that was blocking Cupcakery’s four applications to register THE CUPCAKERY – two for the word mark THE CUPCAKERY (for retail and online retail services and cakes and cupcakes) and two for the THE CUPCAKERY logo (for retail and online retail services and cakes and cupcakes).

On September 28, 2010, Ballus’ attorney filed an express withdrawal of her application with the Trademark Trial and Appeal Board in the pending Opposition that was filed by Cupcakery when her application was published for opposition. See The Cupcakery, LLC v. Sift: A Cupcakery LLC, Opposition No. 91188833 (T.T.A.B.). So that leaves Cupcakery’s applications next in line to claim exclusive rights to use the term “Cupcakery” in connection with a cupcake bakery. It’s only a matter of time before Cupcakery’s applications will be removed from suspension and examined on the merits.

And it looks like Cupcakery has already started working towards getting other “cupcakeries” to stop using the term “Cupcakery.” One company that had previously been using the term The Cupcakery now seems to be calling itself THE CUP.

USPTO Requesting Comments on Trademark Bullies
The PTO issued a Request for Comments regarding Trademark Litigation Tactics as part of its preparation of a study which the Secretary of Commerce must conduct to explore “(1) the extent to which small businesses may be harmed by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner; and (2) the best use of Federal Government services to protect trademarks and prevent counterfeiting.” See prior blog post here regarding the enacted legislation (The Trademark Technical and Conforming Amendment Act of 2010, Pub. L. No. 111-146, 124 Stat. 66 (effective March 17, 2010) which brought about this interest in trademark bullies.

Blogger Erik Pelton is looking to organize attorneys and businesses who want to sign on to a collective statement to the PTO. Deadline for submitting comments is January 7, 2011, and can be emailed to with the subject line “Small Business Study.”

THE GAP Logo Fiasco
Another example of the maxim “If it ain’t broke, don’t fix it.” BBC Article on Gap’s disastrous decision to change its famous stylized word mark to something that looks like it was created in about 2 minutes using a simple word processor font and unimpressive graphic – and stories of other logo redesigns. Pittsburgh Trademark Lawyer Daniel Corbett blogged on the fiasco here.

Never Ending Trademark Lawsuits
Darden Concepts, owner of the Olive Garden and Red Lobster chain of restaurants and two trademark registrations for NEVER ENDING PASTA BOWL (here and here), sued owner of TGI Fridays for marketing a menu item of “Never Ending Shrimp” (Darden also registered the mark ENDLESS SHRIMP in connection with its Red Lobster restaurants). See Darden Concepts, Inc. et al v. Briad Restaurant Group, L.L.C. et al, Case No. 10-cv-02077 (S.D. Cal. October 6, 2010). Complaint here (via courthousenews). News article on the suit here.

This is not the first time Darden has asserted its rights to the phrase “Never Ending” in connection with food offerings. Just ask IHOP, which was sued by Darden in 2004 over its use of “Never Ending Pancakes” (news article here; cancellation action here). That suit was eventually settled – and you probably have not seen IHOP offering any “Never Ending Pancakes” since.

Incontestable does not Invulnerable
Pamela Chestek reminds us all that having an incontestable trademark registration does not make it an invulnerable trademark registration, especially when the incontestable ownership of the mark may have come about from an improper assignment – as the owners of the STOLICHNAYA trademark for vodka were recently informed of by the Second Circuit Court of Appeals. See Federal Treasury Enter. Sojuzplodoimport v Spirits Int'l N.V., No. 06-3532 (2nd Cir. Oct. 8, 2010).

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