Bakery Claims Trademark On Smiley Face Cookies; Sues Competing Cookie Firm

from the where's-that-cookie-diet? dept

Thu, Jan 7th 2010 1:23pm — Mike Masnick

Mark Montgomery alerts us to yet another case of trademark law being taken to ridiculous ends. Apparently a restaurant/bakery is claiming a trademark on putting a smiley face on a cookie and is suing a cookie store for selling similar cookies:

A key ingredient of Eat'n Park's case is the lawsuit's Exhibit A, which shows a circle with two round eyes, a dot for a nose and a perky smile.

Time to start selling cookies with sad faces, and saying it's all Eat'n Park's fault that the cookies are so sad.

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Filed Under: cookies, smiley faces, trademark

48 Comments

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senshikaze (profile), 7 Jan 2010 @ 12:33pm

or strangely neutral cookies that could be almost happy or almost sad.
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PopeHilarius (profile), 7 Jan 2010 @ 12:41pm

Would making a wink-y face be considered transformative?
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- Marcus Carab (profile), 7 Jan 2010 @ 1:33pm
  
  Re:
  Teehee, then Shephard Fairey could have closed one of Obama's eyes in his poster and avoided the whole mess!
  
  (...but seriously folks: I don't think the whole transformative/derivative thing applies at all in trademarks. Someone correct me if I'm wrong - but I don't understand how it possibly could)
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  - Andrew F (profile), 7 Jan 2010 @ 2:37pm
    
    Re: Re:
    Well, I can't just alter the Nike logo a little and say that now I'm free and clear. It's still likely to confuse someone.
    
    But if I use the Nike logo on something that says "Screw Nike," then I guess it's sufficiently "transformative" because no one except a moron in a hurry would accept that as being official Nike gear.
    
    Or see the South Butt example. http://www.techdirt.com/articles/20091214/2350107352.shtml
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Anonymous Coward, 7 Jan 2010 @ 1:31pm

:)
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Anonymous Coward, 7 Jan 2010 @ 1:32pm

The question on everyone's minds - are these the cookies Kim Kardashian was tweeting about?
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- Anonymous Coward, 7 Jan 2010 @ 1:51pm
  
  Re:
  They're the ones the Cookie monster eats.
  
  Wait a minute, isn't it now the veggie monster? Perhaps the cookie monster should have taken the "healthy" cookie diet instead of becoming the veggie monster.
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Ima Fish (profile), 7 Jan 2010 @ 1:51pm

If these cookies were covered in bacon this story would probably hit the first page of digg.
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Anonymous Poster, 7 Jan 2010 @ 1:53pm

"Time to start selling cookies with sad faces, and saying it's all Eat'n Park's fault that the cookies are so sad."

THIS IS A GENIUS PLAN.
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- Wes, 7 Jan 2010 @ 2:36pm
  
  Re:
  One of Eat'n'Park's competitors sells the "Frownie Brownie". http://www.kingsfamily.com/
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  - Killer_Tofu (profile), 8 Jan 2010 @ 5:54am
    
    Re: Re:
    That .. is brilliant. =)
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JKirchartz, 7 Jan 2010 @ 2:07pm

Eat'n'Parks signature is the Smiley Cookie, They have a giant walking smiley cookie mascot, they sell buttons & pins & t-shirts with the smiley cookie, it's on all their commercials & signs, and kids (and perturbed customers) get a free smiley cookie at the end of their meal. It's understandable to see Eat'n'Park defending it's trademark, after all they don't wanna lose it.
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- ChrisB (profile), 7 Jan 2010 @ 2:18pm
  
  Re:
  This is a good idea, but cruising their website I do not see one instance where they claim Trademark on the "Smiley Cookie." If they do have a trademark on the "Smiley Cookie" shouldn't they have to show that on their site?
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- ChurchHatesTucker (profile), 7 Jan 2010 @ 6:10pm
  
  Re:
  "It's understandable to see Eat'n'Park defending it's trademark, after all they don't wanna lose it."
  
  FOR FUCK'S SAKE, IT'S A SMILEY!
  
  Sorry. Sorry everyone. I'll turn this frown... well, I consult a lawyer about that...
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  - Dementia (profile), 8 Jan 2010 @ 1:14pm
    
    Re: Re:
    Doesn't Forrest Gump own the trademark on the smiley?
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- Anonymous Coward, 8 Jan 2010 @ 5:21am
  
  Re:
  While they may have a trademark on a smiley cookie, I'm sure the trademark doesn't reference an actual cookie, but applies to advertising, merchandising, etc. You can't trademark "look and feel", as Apple famously found out. ANYONE can make and sell cookies that look identical to Eat'N'Parks. Hell, imagine if someone were to trademark scrambled eggs, or bagels, or toast? Is anyone seriously of the opinion that nobody else could then make and sell toast? There's defending your trademark, and then there's filing frivolous lawsuits, and this is the latter. Good thing they're not calling them "Monster Smiley cookies"...
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- Comboman (profile), 8 Jan 2010 @ 5:51am
  
  Re:
  They shouldn't have chosen such a generic image as their trademark, assuming that they even trademarked it, which isn't at all clear (even Walmart ran into smiley trademark issues).
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scarr (profile), 7 Jan 2010 @ 2:11pm

No pics, but I wonder if they're anything like the smiley face cookies a friend of mine's family bakery chain makes (in another part of the country).
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- JKirch (profile), 7 Jan 2010 @ 2:14pm
  
  Re:
  http://www.eatnpark.com/smiley.asp
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  - jjmsan (profile), 7 Jan 2010 @ 2:24pm
    
    Re: Re:
    The site does not indicate a registered trademark and the design is completely generic. I think this suit is a waste of time.
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Another AC, 7 Jan 2010 @ 2:14pm

Where's the problem???
I have just gone to both smileycookie.com and Cookie by Design's website. From the images i can find online the cookies in question look nothing alike. smileycookie.com clearly indicates the mentioned design features that they trademarked. Cookies by Design uses a larger eye with white surrounding a black pupil. The smiles are even distinctly different. Honestly, given a choice, the CBD cookies are cuter with more personality.
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- cc, 7 Jan 2010 @ 2:26pm
  
  Re: Where's the problem???
  And that's precisely what the problem is. The first company put the trademark in place because it doesn't want to ever have to compete.
  
  The second company then came along with an improved design, and the first are using the trademark to stifle them instead of going out and making an ever cuter cookie.
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Samrobb, 7 Jan 2010 @ 2:18pm

A delicious response with just a touch of snark...
The King's Frownie was (AFAIK) created in response to the Eat'n'Park Smiley cookie. Humorous, and 10x more delicious.

http://kingsfrownie.com/
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Mark Harris (profile), 7 Jan 2010 @ 2:22pm

What's Wal-Mart got to say about this?
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IshmaelDS (profile), 7 Jan 2010 @ 2:29pm

I'm no expert on trademark
but isn't there a prior art type clause? I mean really? no one made a "sugar cookie having raised design of a smiling face." before 1987?
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- Tom (profile), 7 Jan 2010 @ 2:57pm
  
  Re: I'm no expert on trademark
  But didn't Forrest Gump create the smiley face and the guy he gave the shirt to ran off to make a million bucks with it?
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- t'vegas, 7 Jan 2010 @ 3:53pm
  
  Re: I'm no expert on trademark
  Eat'n Park acquired the "right" to this cookie design from a small, family-run bakery in Titusville, Pennsylvania. The smiley faces cookies from Warner's bakery were an old, established tradition in Titusville at least back to the 70's. The bakery maintained the right to sell the cookies locally, after '87, but went out of business quite a number of years ago.
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ChimpBush McHitlerBurton, 7 Jan 2010 @ 2:32pm

Pathetic
From their website:
"Why Not Park'n Eat?
The secret to Eat'n Park's original success was innovation. The original carhop concept was developed by Mr. Hatch, who understood in 1949 that cars meant the future and that the Pittsburgh area needed a restaurant to capture the spirit of the times.
It also needed a name that matched its function. Logically, a customer parked first then ate -- either in or out of the restaurant. However, in the late 1940's, "Park & Eat" was as common a sight as "Drive Thru" is today and could not be copyrighted.
In a brainstorm, Hatch and company decided to reverse it -- to Eat'n Park. The catchy name stuck, so much that while the once everywhere "Park & Eat" signs have virtually disappeared from American highways, "Eat'n Park" remains a tri-state tradition, even though the name no longer describes the restaurant's dining style."

Iiiiiiinnnnnteresting...I love the opening sentence: "The secret to Eat'n Park's original success was innovation."
Yes, how bloody innovative to take a popular phrase and reverse it so that it no longer even really made sense. And I seriously doubt that their original success hung on that pathetically retarded reversal.
CBMHB
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Monte Erickson, 7 Jan 2010 @ 2:33pm

Sad face patent
Sorry guys, I think that the sad face was trademarked by the guys at www.despair.com
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- Donald Jessop, 11 Jan 2010 @ 7:55am
  
  Re: Sad face patent
  You are correct, Monte, Despair does indeed have a trademark on the sad face. Fortunately I was one of the lucky people and have a license to use the sad face in perpetuity from Despair. The cost was an email, but it has served me well throughout the years.
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Anonymous Coward, 7 Jan 2010 @ 3:29pm

IANAL, and the article is thin on details, but since this is a brand logo/identity issue, the company does need to protect its trademark, doesn't it?

Like commenter above says, one can't just change the Nike logo a little bit and expect to be able to use it if it could still cause market confusion...

Since the indications are "trademark" and not "copyright", do prior art, innovation, etc. really apply as if it were somebody suing just because "hey your cookies look like mine"?
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- ChurchHatesTucker (profile), 7 Jan 2010 @ 6:15pm
  
  Re:
  "IANAL, and the article is thin on details, but since this is a brand logo/identity issue, the company does need to protect its trademark, doesn't it?
  
  Yes. Nobody would know they were a bunch of asshats unless they constantly got out there and publicized the fact via legal actions.
  
  Brand protected!
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Cohen (profile), 7 Jan 2010 @ 3:33pm

Their web site contains no TM notices anywhere
I'm no lawyer, but for years lawyers have made me insert TM symbols as well as (c) and (r) symbols all over my ads, packaging, and TV spots to protect trademarks as well as other corporate identities.

Eat'n Park doesn't have ANYTHING like that anywhere on their web site.

Their smiling cookie may be iconic, but they sure haven't done anything to protect the image.
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The Anti-Mike (profile), 7 Jan 2010 @ 3:40pm

Trademarks need to be zealously protected and guarded, without which they risk being lost. Unlike a patent or copyright, trademarks are often fairly generic in nature, but do readily identify a company, brand, or similar.

Judging by the website, it would appear that the Smile Cookie is pretty much their entire visual identity. I would also say that their particular smiley face is at least somewhat unique, both in relative scale and details, such as the lines at each end of the smile and so on.

To me, it isn't any more or any less than a Ronald McDonald or a Jack in the box dude.

Mike, I would have to say that this is another example of your over zealousness to
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- The Anti-Mike (profile), 7 Jan 2010 @ 3:40pm
  
  Re:
  slam the system...
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- Anonymous Coward, 7 Jan 2010 @ 5:17pm
  
  Re:
  No... No, the don't. Stop spreading this bullshit FUD. You sound like a moron, just like all the other... oh, right. You ARE a moron. Sorry.
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- ChurchHatesTucker (profile), 7 Jan 2010 @ 6:27pm
  
  Re:
  "Unlike a patent or copyright, trademarks are often fairly generic in nature, but do readily identify a company, brand, or similar."
  
  :)
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- blah blah blah, 7 Jan 2010 @ 6:41pm
  
  Re:
  Yeah, because no one has ever made a cookie with a smiley face on it before - they must be the first ones and they have to protect their intellectual property from those who would steal it out from under their feet - those stealers just copy everything others do and can not come up with anything original and that is why they should have to pay - big time - like put them out of business and stuff - yeah, that's the ticket - shut them down, we do not want the competition
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Anonymous Coward, 7 Jan 2010 @ 3:48pm

Eat'n Park has at least 3 registrations it is asserting: 1,809,410, which is for a particular cookie design
2,108,164, which is for any raised smiley face cookie sold in restaurants, and
3,310,195, which is unlimited for any smiley for any cookies - or pancakes.

This particular series of registrations irks me. We all know that Harvey Ball invented the smiley face design in the 1960s, and didn't trademark it. It's in the public domain. What gives the right for the trademark office to grant unlimited rights to a single company because they put the design on the cookie? If anything, the cookie smile trademark should be thinnest of trademarks - it had better be an exact ripoff for their to be a cause of action.

Coincidentally, Eat'N Park is quite litigious, having filed at least 5 lawsuits I could find (in Pittsburgh, using the same law firm that represented Bilski in the PTO). The latest lawsuit was filed on 12/31/09.

During trademark prosecution, the examiner denied the smiley mark as not indicative of source, and Eat N' Park submitted declarations stating that everyone associated the smiley face cookie with them. The Examiner bought it.

You come to your own conclusions whether this is true. How many people outside of Pittsburgh had ever heard of Eat'n Park?
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Anonymous Coward, 7 Jan 2010 @ 4:03pm

http://twitter.com/smileycookie/
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robphelan (profile), 7 Jan 2010 @ 5:07pm

dear Lord! every mall i've ever been to in the last 25 years has had some sort of cookie shop making cookies with ALL sorts of 'faces' & messages.

sounds like some crowd sourcing is needed to prove prior art
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haha.hehe.hoho, 7 Jan 2010 @ 6:45pm

haha
:):):):):):):):):):):):):):):):):):):):):):):):):):):):):):):):):):):):):):):):):):):):):):):):):):) :):):):):):):):):)
come sue me
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Michael, 8 Jan 2010 @ 3:58am

My new trademark
So I am filing an application for a trademark on an upside down smiley face cookie.

I'm then going to wait for the North Face / South Butt case to come to an end. If South Butt wins, I am going to sue Eat'n Park for every cookie of theirs that I find upside down.
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Pittsburgher, 8 Jan 2010 @ 6:47am

I'm no copyright/trademark defender, trust me, but its obvious no one in this thread is from Pittsburgh. The EN'P smiley cookie is like a cultural icon around here. To us it is very distinctive. I'm not defending their aggression, but you should understand this is about more than just a smiley face.
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porkster, 8 Jan 2010 @ 10:19am

Oh no!
I'd like to turn in my grandma, shes been making cookies with smiley faces on for as long as I can remember.

Please put her in a prison with people who like to do quilting.

Thank you
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anonymous, 8 Jan 2010 @ 11:02am

hmmm...
Does 'no dot for a nose' clear their name? http://www.cookiesbydesign.com/gift-baskets/just-because-gifts/smiling-faces http://www.ea tnpark.com/smiley.asp
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anonymous, 8 Jan 2010 @ 11:02am

hmmm...
Does 'no dot for a nose' clear their name? http://www.cookiesbydesign.com/gift-baskets/just-because-gifts/smiling-faces http://www.ea tnpark.com/smiley.asp
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Sunshine, 8 Jan 2010 @ 4:53pm

They do.
A local, competing chain to Eat'n'Park, which is a really demented name, sells Frownie Brownies. They have scowls on them. Wonderful marketing to children.

I think this is fair, though. The smiley cookie is Eat'n'Park's logo. Too my knowledge, it's copyrighted. They have shirts, mugs, all kinds of stuff with these silly bland cookies on them. We're Pittsburghers. We're nuts.
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