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?

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Companies: family express, square donuts

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Comments on “Stupid Square Donuts Trademark Dispute Still Going Strong Despite The Mark Being Purely Descriptive”

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Anonymous Anonymous Coward (profile) says:

Problems with product names

This may only be tangentially related.

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?

That Anonymous Coward (profile) says:

IP is the engine of our economy!!!!
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.

Anonymous Coward says:

It is noteworthy that the original user of the term square donuts has secured two federal registrations of variations of the mark, and such registrations appear on the principal register. Under US law descriptive marks are eligible for registration if they have achieved or are susceptible of achieving secondary meaning.

ankita (user link) says:


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Steerpike (profile) says:

What’s the basis for the claim that they don’t have secondary meaning. It’s true, they may not have secondary meaning, but in the article it’s just kind of thrown out there without any reasoning.

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.

Scott S. (profile) says:

Re: Re: Squarenuts

“Anonymous” Dave:
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. 🙂

Dave says:

Scott, I don’t know if anyone is using Squarenuts for Square Donuts but if you did use you might possibly have a problem.
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?

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