Stupid Square Donuts Trademark Dispute Still Going Strong Despite The Mark Being Purely Descriptive
from the hurts-donut dept
Stories like this aren't supposed to have happened. Back in 2006, a Terre Haute company called Square Donuts Inc. sent a cease and desist notice to a convenience store chain in Indiana called Family Express, which also sells square-shaped donuts. The notice claimed that the latter was infringing on the former's trademark for "square donut", for which it had received a trademark registration from the USPTO. In 2016, Family Express sued Square Donuts Inc. to have a court declare its use non-infringing due to the lack of customer confusion and, more importantly, the fact that the trademark should never have been granted on the grounds that it is purely descriptive. As is usually the case, the ultimate fault for all of this lies at the feet of the USPTO, which never should have granted this trademark to begin with.
Yet that doesn't change how absurd it is that this dispute is still going on. Very, very strangely, the most recent happening in this story is now it's Square Donuts Inc. that is petitioning the court for a judgment on the matter.
"This case presents an actual controversy within the court’s original jurisdiction," Square Donuts argued. "Defendants have asserted that Family Express' use of the name Square Donuts violates defendants’ Square Donuts trademarks, has demanded that Family Express cease its use of the Square Donuts name, and has denied Family Express's request that the parties consent to contemporaneous use of Square Donuts in Indiana and rejected efforts to enter into a coexistence agreement with implied threats of litigation. The totality of the circumstances in this matter create an actual controversy requiring a declaratory judgment from this honorable court."
Square Donuts argues that Family Express' use of the term is likely to cause confusion among consumers and that it should be prohibited from using the term.
I don't generally like to get into the predictions business, but it's incredibly hard to see how any of this ends in any way other than Square Donuts Inc. losing its trademark entirely. The mark is purely descriptive without anything resembling a secondary meaning. The company is called Square Donuts and sells square donuts. That is no more permissible as a trademark as would be a company called Forks Inc. selling forks. And, yet, Square Donuts seems to be all on board with having a judge rule as to whether Family Express' use is infringing or not. The end result of that will likely be ammunition for Family Express to petition to have the mark invalidated.
How is that a strategy for success?
Thank you for reading this Techdirt post. With so many things competing for everyone’s attention these days, we really appreciate you giving us your time. We work hard every day to put quality content out there for our community.
Techdirt is one of the few remaining truly independent media outlets. We do not have a giant corporation behind us, and we rely heavily on our community to support us, in an age when advertisers are increasingly uninterested in sponsoring small, independent sites — especially a site like ours that is unwilling to pull punches in its reporting and analysis.
While other websites have resorted to paywalls, registration requirements, and increasingly annoying/intrusive advertising, we have always kept Techdirt open and available to anyone. But in order to continue doing so, we need your support. We offer a variety of ways for our readers to support us, from direct donations to special subscriptions and cool merchandise — and every little bit helps. Thank you.
–The Techdirt Team
Filed Under: donuts, square donuts, trademark
Companies: family express, square donuts
Reader Comments
The First Word
“Silly people
It’s not donuts are square, it’s pie are square.Subscribe: RSS
View by: Time | Thread
Problems with product names
I haven't been in a Starbucks in more than 10 years, but before that I would, occasionally stop by (I preferred Peets, when I didn't make my own). I usually ordered a large coffee, and they would come back to me with their Veni, Vidi, Vici (or whatever) crap, and then I would have to explain to the sap behind the counter that large is not a name, it's not even a noun, it's an adjective, a descriptor and that I could care less (I wasn't always that polite) what THEY named it, what I wanted was large.
So lets say that Family Express gives up calling their donuts square (they certainly cannot be stopped from making them square), they could just start calling them equilateral rectangles. But I, as a customer, would likely ask for a square donut, and Square Donuts Inc. would have nothing to say about it. Then, one has gotta ask, who won?
[ link to this | view in thread ]
Or, They Could Spell It Properly ...
[ link to this | view in thread ]
Silly people
[ link to this | view in thread ]
[ link to this | view in thread ]
If not for the USPTO issuing bullshit they never should have, there would be entire firms of lawyers out of business!!
Seeking kajillions for rounded corners, square things, people using the name movers....
Perhaps its time to start clearing out the USPTO current oversight, & start a new team who has to work backwards invalidating all of the bullshit that doesn't pass muster.
[ link to this | view in thread ]
[ link to this | view in thread ]
resturant
Health & Medical, Hire Anything, Hotels & Restaurants, Internet Services, On Demand Services, Professional Services, Real Estate, Repair, Security Services, Travel & Transport, Wholesaler, Wine Shops.
[ link to this | view in thread ]
Re: Silly people
;)
E
[ link to this | view in thread ]
They know something
[ link to this | view in thread ]
[ link to this | view in thread ]
Re:
[ link to this | view in thread ]
[ link to this | view in thread ]
Re: Re: Silly people
[ link to this | view in thread ]
Re: Re: Re: Silly people
[ link to this | view in thread ]
Re: Re:
[ link to this | view in thread ]
Settlement arrangmeent...
QUADRILATERAL NUTS OF DOUGH
[ link to this | view in thread ]
Re: Settlement arrangmeent...
[ link to this | view in thread ]
In any event, I'm not sure it matters too much. You look at descriptiveness in the context of the good/services provided, and the registration they're arguing over is a registration of SQUARE DONUTS for "cafe services." That's not descriptive. It also shouldn't be broad enough to stop someone else calling their actual donuts square donuts.
[ link to this | view in thread ]
Squarenuts
[ link to this | view in thread ]
Re: Squarenuts
[ link to this | view in thread ]
Re: Re: Squarenuts
Who else is using Squarenuts for square donuts? You didn't say. But good for them. What about Apple's use of clearly descriptive / generic names such as "Pages," "Mail," or "Photos." Or Microsoft's use of "Word" and "Windows." Or the fraudsters at "trademark bully" Entrepreneur magazine using clearly generic word "entrepreneur" for title of a magazine for and about "entrepreneurs"? (and started by a serial con artist and convicted bank robber) None of these are "unique." "Dave" is also not at all "unique." But I guess that helps when you're desperate to be Anonymous. :)
[ link to this | view in thread ]
As far as Apple and Windows they are descriptive but you must admit they definitely have new meanings now in the present.
I really don't know what you are talking about as far as Entrepreneur. It's a well know magazine and I don't know about the owner if he is a criminal or not or what that has to do with anything.
My name is not unique in itself but it is unique to myself. I don't understand your anonymous comment. My name is Dave. I made a comment on a story. What were you expecting? A copy of my DL, credit report?
Paranoid?
[ link to this | view in thread ]
Re: Silly people
[ link to this | view in thread ]