"It's DUNKIN' DONUTS in the USA"

Last month we wrote about DUNKIN' COFFEE in Spain. This month, having just returned from Boston, Mass. last week, we can accurately report that it is still, indeed, DUNKIN' DONUTS, here in the good old U.S. of A. Whew!......






The undersigned attended the Annual Meeting of the International Trademark Association (INTA) which was held last week in Boston, Mass. (May 22 - 26, 2010), and it seemed that there were DUNKIN' DONUTS locations everywhere. For a professed donut lover this was welcome news. And all the chit chat I've heard over the years about "how good the coffee is at Dunkin' Donuts!".... well, it's true. It's darned decent coffee.

So what does all this have to do with trademarks, you might ask? Plenty! Canton, Mass, as it turns out, is the headquarters of Dunkin' Donuts, a subsidiary of Dunkin' Brands, Inc. Also, Dunkin' Donuts owns a bunch of trademarks and service marks worldwide. Plus, the Trademark Manager, Terry Ursino, at Dunkin' Brands, Inc. was interviewed in the INTA Daily News last week during the INTA Annual Meeting and an excerpt of same is included below.

Dunkin' Trivia: Did you know that Dunkin Brands, Inc. also owns the Basin-Robbins ice cream brand and its trademarks? True story!

Therefore, the balance of this blog post will be a short summary of trademark related facts and figures about Dunkin' Donuts, as TrademarkEsq continues its quest to do mash ups of cool brands and trademarks.

A. Dunkin' Donuts, The Trademark, USA:

The earliest U.S. trademark registration we could locate online at uspto.gov for Dunkin' Donuts, is as follows:



Word Mark DUNKIN' DONUTS
Goods and Services IC 030. US 046. G & S: Doughnuts [and Doughnut Flour, Pastry Fillings and Toppings, Flavoring Extracts, Shortenings, ] and Coffee. FIRST USE: 19540700. USED IN ANOTHER FORM as to "Dunkin' Donuts" on doughnuts May 1952. FIRST USE IN COMMERCE: 19560700
Mark Drawing Code (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS

Serial Number 72054025 Filing Date June 23, 1958
Current Filing Basis 1A Original Filing Basis 1A
Registration Number 0715860
Registration Date May 23, 1961

note: According to the records online at uspto.gov, Dunkin' Donuts owns at least 18 registered trademarks and service marks in the USA, plus several pending trademark applications. Thus, one can see that Trademark Registrations play an important role in protecting this famous brand name.

B. Dunkin' Donuts, Worldwide; Comments:

According to Terry Ursino at Dunkin' Brands, Inc., there are Dunkin' Donuts and Baskin-Robbins restaurants in 45 countries and that they have registered their marks more broadly than that, e.g., in more than 45 countries. This suggests that Dunkin' adheres to the strategy of both offensive and defensive trademark registrations. Offensive marks are those that apply to countries where one offers goods and/or services. Defensive registrations are for those countries where pirating and counterfeiting is anticipated and where use may not yet occur or anticipated.

C. Dunkin Donuts, The INTA Daily News interview (excerpt only):

Question: What is the single biggest challenge you face in protecting your particular brand?

Answer: "Staying one step ahead of trademark priates and cybersquatters. Our brands are world famous, and with fame comes imitation and unauthorized use of our IP."

(Source: "Defending a Delicious Brand", INTA Daily News, Wed., May 26, 2010.)

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Just a few comments overall about things we think are fun and interesting in the area of brand names and trademarks for you to consider.

Time for a cup of joe,


William Maguire
Blog: wwwTrademarkEsq.blogspot.com
Web: www.TrademarkEsq.com

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USPTO Trademark Practice: The USPTO Brush-back

Subject: USPTO Trademark Practice: The USPTO Brush-back

Definition: "The USPTO Brush-back": Commonplace or typical USPTO grounds for the refusal of an application based on statutory and case law. Origin: The brushback pitch in baseball is an aggressive pitch on the inside of the plate facing the batter intended as a means for the pitcher to regain control of the inside corners of the plate. This term has been adopted and hyphenated to refer to the USPTO office practice of refusing trademarks that stretch beyond the parameters of the USPTO Rules of Practice, including but not limited to, the Lanham Act, the TMEP, TTAB rulings, etc.

Example: This term was first used in our last post on this blog in discussing the USPTO response to the filing of an otherwise merely "laudatory" trademark in an application for "THE BEST BURGER IN L.A.". For instance, in paragraph 1 of this earlier referenced blog post, this term of art was incorporated as follows: "1. THE BEST BURGER IN L.A. Is it registrable for restaurant services ? Might want to slap on a logo and some other distinctive elements as this mark may otherwise get brushed back by the USPTO as merely 'laudatory'." Additionally, in paragraph 2, "... And for those of you interested in the USPTO Template brush-back language with respect to the technical "Disclaimer" that will most certainly be required for a restaurant service mark application that includes a merely descriptive term..."

Thus, the term "brush-back" applies to grounds for refusal as well as technical requirements such as 'disclaimers' or recommendations for transfers to the supplemental register, etc. Such brush-backs are a common part of USPTO Trademark Practice. Some are well reasoned and some are not. On some occasions antiquated refusals are issued based on case law that is ambiguous and not compulsory. For instance, in the apparel field the refusal basis as to a specimen being merely 'ornamental' continues to be played out by the USPTO and Applicants. To avoid this costly and often unreasonable expense to an Applicant having to pay their attorney to traverse or overcome such a refusal, it is always recommended that an Applicant provide a sample clothing label or hang-tag that features the trademark in view of the USPTO's near-sighted position on, for example, silk-screened reproductions of the trademark directly on the garment.

In this regard, a USPTO brush-back refusal based on an apparel specimen being rejected as merely "ornamental" and thus not legitimate trademark use seems to even be supported by the TMEP at:

"Sec. 1202.03(f)(i) Slogans or Words Used on the Goods

Slogans or phrases used on items such as t-shirts and sweatshirts, jewelry, and ceramic plates have been refused registration as ornamentation that purchasers will perceive as conveying a message rather than indicating the source of the goods. See Damn I’m Good Inc. v. Sakowitz, Inc., 514 F. Supp. 1357, 212 USPQ 684 (S.D.N.Y. 1981) (“DAMN I’M GOOD,” inscribed in large letters on bracelets and used on hang tags affixed to the goods, found to be without any source-indicating significance); In re Pro-Line Corp., 28 USPQ2d 1141 (TTAB 1993) (BLACKER THE COLLEGE SWEETER THE KNOWLEDGE primarily ornamental slogan that is not likely to be perceived as source indicator); In re Dimitri’s Inc., 9 USPQ2d 1666 (TTAB 1988) (“SUMO,” as used in connection with stylized representations of sumo wrestlers on applicant’s T-shirts and baseball-style caps); In re Astro-Gods Inc., 223 USPQ 621, 624 (TTAB 1984) (“[T]he designation ‘ASTRO GODS’ and design is not likely to be perceived as anything other than part of the thematic whole of the ornamentation of applicant’s shirts.”); In re Original Red Plate Co., 223 USPQ 836 (TTAB 1984) (“YOU ARE SPECIAL TODAY” for ceramic plates found to be without any source-indicating significance)."

Such a brush-back, however, may be overcome citing other principles and case law, including both Federal Court decisions, as well as those of the TTAB.

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 !