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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  • icon
    Anonymous Anonymous Coward (profile), 3 May 2018 @ 6:32pm

    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?

    reply to this | link to this | view in chronology ]

  • identicon
    Lawrence D’Oliveiro, 3 May 2018 @ 8:16pm

    Or, They Could Spell It Properly ...

    ... as “doughnuts”. Problem solved.

    reply to this | link to this | view in chronology ]

  • icon
    DOlz (profile), 3 May 2018 @ 9:13pm

    Silly people

    It’s not donuts are square, it’s pie are square.

    reply to this | link to this | view in chronology ]

  • identicon
    Zem, 3 May 2018 @ 9:28pm

    And this is why you don't try to put a square donut in a round hole.

    reply to this | link to this | view in chronology ]

  • icon
    That Anonymous Coward (profile), 3 May 2018 @ 9:39pm

    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.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 3 May 2018 @ 9:55pm

    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.

    reply to this | link to this | view in chronology ]

  • This comment has been flagged by the community. Click here to show it
    identicon
    ankita, 4 May 2018 @ 2:36am

    resturant

    Dadrionline-Free Classifieds in Charkhi Dadri for Agriculture, Building & Construction, Cars & Bikes, Computers, Cosmetics & Fashion, Daily Needs, Emergency Services, Events, Education/Coaching, Electronics/Electricals, Garments & Footwear,
    Health & Medical, Hire Anything, Hotels & Restaurants, Internet Services, On Demand Services, Professional Services, Real Estate, Repair, Security Services, Travel & Transport, Wholesaler, Wine Shops.

    reply to this | link to this | view in chronology ]

  • icon
    Gary (profile), 4 May 2018 @ 7:14am

    They know something

    If I were the suspicious type I'd be convinced that they have an inside track on what the judge thinks. I see cases like this all the time, and the only rational answer is they bribed the judge.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 4 May 2018 @ 7:28am

    "square donuts" from Square Donuts company are chemically processed artificial crap that shouldn't be entering the human body, that taste like bland personified, and they feel a desperate need to protect the shape because that's all they have going for them.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 4 May 2018 @ 8:31am

    This square donut company had better watch out if they decide to round their corners.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 4 May 2018 @ 9:22am

    Settlement arrangmeent...

    And now for something totally different...


    QUADRILATERAL NUTS OF DOUGH

    reply to this | link to this | view in chronology ]

  • icon
    Steerpike (profile), 4 May 2018 @ 2:01pm

    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.

    reply to this | link to this | view in chronology ]

  • icon
    Scott S. (profile), 5 May 2018 @ 11:25am

    Squarenuts

    Perhaps Family Express should up the zaniness by calling their "square donuts" something like Squarenuts.

    reply to this | link to this | view in chronology ]

    • identicon
      Dave, 5 May 2018 @ 3:32pm

      Re: Squarenuts

      Squarenuts just like Square Donuts is already being used. They are both unique. People should do a little work before they go and copy something. Somebody might have thought of it first.

      reply to this | link to this | view in chronology ]

      • icon
        Scott S. (profile), 5 May 2018 @ 7:26pm

        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. :)

        reply to this | link to this | view in chronology ]

  • identicon
    Dave, 6 May 2018 @ 9:55am

    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?
    Paranoid?

    reply to this | link to this | view in chronology ]


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