Trademark For 'Square Donuts' At Heart Of Trademark Dispute Despite It Being Entirely Descriptive
from the hurts-donut dept
One of the rules that is supposed to keep trademark law from creating language-lock insanity is the prescription against trademarking purely descriptive terms. That’s why you get a trademark on Coca-Cola and Pepsi, but not on “soda.” It’s why “computer” is not a valid trademark term. Were this not the case, companies could simply lock up the language of their marketplaces, restricting terms not to the benefit of the consumer, but purely as a monopolizing strategy.
And, yet, this doesn’t always play out in practice. For instance, there is currently a dispute between a company called Square Donuts, that sells square donuts, and a convenience store chain out of Indiana that also sells square-shaped donuts.
Charles Meyer, who represents Richard A. Comer Jr. and his business Square Donuts Inc., said he disagrees with claims by Family Express convenience stores that the Valparaiso-based chain is not infringing on the trademarked name of Square Donuts, which was established as a family-owned business in Terre Haute in the 1960s and now has nine locations in Indiana.
“It’s a well-established name, and we want to protect that,” Meyer told the Tribune-Star on Monday.
Mr. Meyer misses the point entirely in this response. The establishment of the name of a business, while important, does not in and of itself route around the requirement in trademark law that a mark not be purely descriptive. There are indeed provisions in the law allowing for marks that have taken on a secondary meaning in the marketplace, even if descriptive, but it’s difficult to understand how Square Donuts Inc. would qualify. The company sells donuts in the shape of a square and called itself Square Donuts. There’s no secondary meaning implied or intended. This didn’t keep Square Donuts Inc. from firing off a cease and desist letter to Family Express all the way back in 2006, causing the latter company to eventually look to the courts to declare that it was not infringing in its use.
It was in January 2006 that Comer’s family-owned business sent a cease and desist letter to Family Express claiming trademark rights for the “square donuts” name. Family Express claims that it responded about two weeks later explaining that no infringement existed for its descriptive.
In January 2012, the Terre Haute business obtained an Indiana State trademark registration for “Square Donuts Inc.,” and received a federal trademark registration in May 2013. The “word marks” registered include not only the “Square Donuts” words, but also the well-known design of a square with a hole in the middle and a bite taken out of the right side.
And then, earlier this year, the USPTO declined Family Express’ trademark application for “square donuts”, not because of its descriptive nature, but because it had already granted a similar mark to Square Donuts Inc. As per usual, the ultimate fault for this silliness can be laid at the feet of the USPTO. I’m trying to think of a better example of how the trademark office just isn’t paying any attention than the fact that it granted a trademark for “square donuts”, a combination of an adjective and a noun, likely the purest example of describing something in the English language.
So way to go, guys. If you had just bothered to keep to the rules of trademark law and its purpose, we wouldn’t have to read about to companies bickering over square donuts. Oh well…
Comments on “Trademark For 'Square Donuts' At Heart Of Trademark Dispute Despite It Being Entirely Descriptive”
The surfeit of lawyers have to be able to grow fat bank accounts somehow, and the USPTO is playing its part in helping them to do that
You had one job.
Seriously, Tim, you should learn the basics before you go making legal conclusions. You just look stupid. And you make Mike look even stupider for having someone who knows next to nothing about an area of law making such stupid claims.
There are indeed provisions in the law allowing for marks that have taken on a secondary meaning in the marketplace, even if descriptive, but it’s difficult to understand how Square Donuts Inc. would qualify. The company sells donuts in the shape of a square and called itself Square Donuts. There’s no secondary meaning implied or intended.
Your cite to Wikipedia is a start, though it’s clear you didn’t understand what you read. One doesn’t imply or intend secondary meaning. One acquires it through use. Here, the service mark (it’s not a trademark, which you would know if you did 10 seconds of research) has been in use since 1968. Over those years, people have come to associate “square donuts” with a particular source. That acquired distinctiveness was then proved to the USPTO, and hence the federal registration.
This is basic, basic stuff. First day trademark law, 101, basic stuff.
As per usual, the ultimate fault for this silliness can be laid at the feet of the USPTO. I’m trying to think of a better example of how the trademark office just isn’t paying any attention than the fact that it granted a trademark for “square donuts”, a combination of an adjective and a noun, likely the purest example of describing something in the English language.
Yes, it was initially purely descriptive. The question is whether it acquired secondary meaning. The USPTO obviously was convinced it did. Unless you can show they were wrong, which given your epic cluelessness I don’t think you can, then you haven’t shown how “the trademark office just isn’t paying any attention.” The only one not paying attention is you. Yet you’re apparently too dumb to know how dumb you are.
Keep up the great work, Techdirt! Timmy’s a winner!
Re: Re:
What “secondary meaning” did it acquire? “Square Donuts” is referring to, you guessed it, SQUARE DONUTS. That’s not secondary meaning.
By secondary meaning, they are referring to “Jell-O” becoming a common term for flavored gelatin. The meaning of the term in question ws not acquired, it was descriptive from the start.
By your reasoning, Uber should be able to trademark “Black Car” and we would have to wipe out a color selection from every auto manufacturer’s lineup.
Re: Re: Re:
Not trying to be a jerk, but how does “Yellow Cab” fit in to this. Totally descriptive but a long held trademark.
Re: Re:
Seriously, your condescending attitude makes you appear to be an asshole. Why not just discuss the issues like an adult?
Re: Re:
Just what the fuck, jackass? You vomit your word salad here and leave without cleaning it up.
While the name is descriptive and not subject to trademark, the actual donuts might be. Coca-cola has the shape of their bottle trademarked so there is precedent for trademarking products with an unusual shape. On the other hand, square donuts are the most practical shape for placing them in square boxes, so they can probably not trademark this specific shape either.
Imaginary Proprety
Next they’ll patent donuts with “rounded edges”.
Excelsior!
Easy solution:
Turn 45 degrees. “Diamond donuts”. You can market them with “diamonds are a cop’s best friends” though there is potential for misunderstanding.
Easy Fix
The new company can just rebrand itself as, wait for it…
Donuts Squared
(techdirt doesn’t support the sup tag apparently)
Re: Easy Fix
Nice! Many cool & distinctive logo possibilities with D^2.
Re: Re: Easy Fix
For “donuts squared” I want a topology-based logo. Don’t let the Klein bottle hit you on the way out.
For what it’s worth, Square Donuts is a pretty good little donut shop, and makes some tasty donuts. And having been in business under that name for so long here in Indianapolis, I can see how the association between its name and logo and that particular shop could be deemed worthy of protection.
The funny thing, really, is that you don’t see more places selling square donuts, even decades after this business was founded. If they’re not that big of an innovation, you’d think they’d be more widespread.
Re: Re:
I’ve eaten the donuts from the Terre Haute shop, and they’re good donuts. But the square thing is just a gimmick. It doesn’t make the donuts better in any way, so I’m not surprised that it hasn’t been widely copied.
Look at the classes
I just conducted a small search on the Square Donuts trademarks, and it appears that they were not registered for donuts, but for retail and cafe services. So USPTO had to consider the services with relation to the trademark. Of course this mark is descriptive for donuts, but it was not applied for those. It could be that the USPTO considered it distinctive for retail and cafe service. Hence, the registration.