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

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

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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Comments on “Bakery Claims Trademark On Smiley Face Cookies; Sues Competing Cookie Firm”

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48 Comments
Andrew F (profile) says:

Re: 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

JKirchartz (profile) says:

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.

Anonymous Coward says:

Re: 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”…

Another AC says:

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.

cc says:

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.

t'vegas says:

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.

ChimpBush McHitlerBurton says:

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

Anonymous Coward says:

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”?

Cohen (profile) says:

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.

The Anti-Mike (profile) says:

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

blah blah blah says:

Re: 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

Anonymous Coward says:

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?

Sunshine says:

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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