The Cupcake War

I guess it was predetermined years ago after Famous Amos and Mrs. Fields faced each other down in a no holds barred UFC-like battle of the taste buds on your local store shelf. And so, today it is ALL ABOUT THE CUPCAKE ! Hostess never made it into the Big Leagues of this Designer Dessert Pastry Clique but then it has massive distribution, so who cares !

In the Designer Cupcake Community, however, a trademark battle is now unfolding and it is not just the cupcake wrappers. As reported on August 21, 2008 by L.A. Times Staff Writer, Kimi Yoshino, the famed Beverly Hills cupcake bakery, SPRINKLES, has filed a lawsuit in Federal Court, in the Central District of California (Case 2:08-cv-05349-MRP-PJW) claiming that its competitor, FAMOUS CUPCAKES, has copied Sprinkles so-called "modern dot" design trademark. This design has been described as a "circle-on-circle, color-coded piece of candy that tops every Sprinkles cupcake and helps distinguish a 'Red Velvet', say, from a 'Chai Latte'". Readers of the L.A. Times have even been invited to weigh in, metaphorically speaking, on the battle of the cupcake bakeries at:

http://www.latimes.com/cupcakes

A trademark includes, pursuant to Sec. 1127 of the Lanham Act, "any word, name, symbol, or device, or any combination thereof." The Sprinkles "modern dot" trademark would qualify as either a symbol or device. Indeed, the Sprinkles "modern dot" trademark is registered with the USPTO as Reg. No. 3224075 (Reg. Date: April 3, 2007) and the mark is described in said registration, as follows: "The mark consists of a nested-circle design placed prominently on the top center of a cupcake. The dotted lined cupcake in the drawing shows placement of the mark."

Perhaps most interesting, however, from a filing point of view, is that this mark was registered under Sec. 2(f), rather than Sec. 1(a). Section 2(f) provides for "the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce." In a review of the file wrapper or file history found online at uspto.gov, the mark was originally filed under Sec. 1(a) but was initially refused as lacking in inherent distinctiveness. Thus, the applicant was faced with either abandonment of the application or changing its filing basis to that allowed by Sec. 2(f) and providing evidence of "acquired distinctiveness". The applicant was apparently able to provide such evidence in view of the following statement made by the Examining Attorney, namely: "The provided Section 2(f) evidence is acceptable and made of record. Therefore, the non-distinct configuration refusal and ornamental refusal are hereby withdrawn."

In delving even further into the Applicant's response to the initial refusal and the evidence provided to prove distinctiveness, said evidence even included the Declaration of the Fonz, aka, the actor Henry Winkler:

http://tmportal.uspto.gov/external/PA_1_0_LT/OpenServletWindow

The Fonz' household consumption of Sprinkles cupcakes apparently numbers approximately thirty (30) per month, so I hope he also has a personal trainer or a large family. We don't have to worry about the Winkler Household Monthly Cupcake Consumption Rate (hereinafter, WHMCCR), however, because the applicant also bagged the Declaration of Henry Winkler's wife, Stacy, who also corroborated the aforesaid WHMCCR and declared that the so-called modern dot design is unique to Sprinkles.

If I were Famous Cupcakes, Inc., I would capitulate now or surely be prepared to face down the Fonz in court ! Heeeeeeey !