Two businesses in Indiana are squaring off in a trademark lawsuit over the right to use the term Square Donuts for…well, square-shaped donuts.

Back in 2005, Square Donuts, a cafe with four locations in Indiana, sent a letter to Family Express (a convenience store chain with 70 locations in Indiana), demanding that Family Express cease the use of the term “Square Donuts” for the square-shaped donuts sold in its stores.

The parties wrangled for years about a potential co-existence agreement, in which Square Donuts would allow Family Express to use the “square donuts” term, but they never reached an agreement.

Later, Square Donuts filed a federal trademark application for the word mark SQUARE DONUTS for “cafe services,” claiming use since 1968, and obtained registration in 2013. (Reg. No. 4341135). The USPTO initially refused registration based on mere descriptiveness, but the refusal was overcome when Square Donuts claimed acquired distinctiveness (secondary meaning based on long and substantially exclusive use).

A couple years ago, Family Express filed a preemptive, declaratory-judgment complaint in Indiana federal court, on several grounds–including that the term “square donuts” is generic, and therefore, Square Donuts’s trademark registration No. 4341135 should be cancelled, and Family Express has the right to use that generic term. Additionally, Family Express filed last year a petition for cancellation before the Trademark Trial and Appeal Board (TTAB), also claiming this registration should be cancelled based on genericness. (The TTAB proceeding is currently suspended based on the federal court action.)

The genericness claim is interesting for a couple reasons. First, in both its federal court complaint, and the TTAB petition, Family Express claims the SQUARE DONUTS registration should be cancelled because the term “square donuts” has become “generic…for square-shaped donuts.” But as discussed in previous posts, the genericness inquiry must be tied to the particular goods or services for which the trademark rights are claimed and registered. Magic Wand Inc. v. RDB Inc., 19 USPQ2d 1551, 1553 (Fed. Cir. 1991). Square Donuts registered and claims rights to the mark SQUARE DONUTS for its “cafe services,” particularly as the name of its cafe.

Indeed, in the Board’s order suspending the TTAB proceeding, the Board left a footnote that was critical of Family Express’s genericness claim, and suggested it must be re-pleaded in an amended petition, if the suspension is lifted, because the genericness inquiry must be “based on the recited services in the registration at issue,” namely cafe services, not “square-shaped donuts.” However, as also correctly noted by the Board, a term can be generic for a genus of services, such as cafe services, if the relevant public understands the term to refer to a key or featured good that characterizes that genus of services (e.g., serving square-shaped donuts).  In re Cordua Rests., Inc., 118 USPQ2d 1632, 1637 (Fed. Cir. 2016).

Therefore, the appropriate genericness inquiry here — which will be more difficult for Family Express to establish — is whether the term “square donuts” has become generic for the genus of “cafe services.” In other words, do the relevant consumers refer generally to the genus of cafes (even cafes that feature square donuts), as “square donuts”?

Second, another interesting point is that Family Express still appears to be claiming trademark rights to “Square Donuts” as a brand for their donuts, while arguing the term is generic at the same time. The Family Express website, “Our Brands,” prominently features a section discussing their “Square Donuts” brand, with an introductory paragraph about “our proprietary brands.” This cuts against their argument that the term is generic, meaning it’s not a “brand,” and no party can claim exclusive, “proprietary” rights. I wonder if that website will show up as an exhibit at some point.

What do you think? Will Family Express be able to establish genericness here? Stay tuned for further updates on this dispute.

 

World-famous chef Wolfgang Puck recently became embroiled in a trademark battle with Elon Musk’s brother, Kimbal Musk, a venture capitalist and entrepreneur who owns The Kitchen Cafe, a family of restaurants in Boulder, Fort Collins, Denver, Glendale, and Chicago. Puck has opened new restaurants with the names “The Kitchen by Wolfgang Puck” and “The Kitchen Counter by Wolfgang Puck.”

Musk’s company The Kitchen Cafe, LLC (“TKC”) filed a trademark infringement suit in Illinois federal court against Wolfgang Puck Licensing LLC (“Puck”). TKC’s complaint alleged Puck’s restaurant names infringed TKC’s common law trademark “THE KITCHEN.” Puck filed a motion to dismiss and also filed a separate declaratory judgment suit in federal court in the Northern District of Illinois.

In the declaratory judgment complaint, Puck argued that “the phrase ‘the Kitchen’ is fundamentally incapable of protection as a standalone trademark or service mark or as an element of a trademark or service mark because it is generic, or, at best, merely descriptive of such services, and that TKC’s assertion is legally untenable and factually absurd.”

Puck further argued that TKC has not acquired distinctiveness in “THE KITCHEN” as there are “hundreds of other restaurants which use ‘kitchen’ in their names.” Puck emphasized several such examples in the Chicago area, including the Lyfe Kitchen restaurant, which is a block and a half from TKC, the Travelle Kitchen, which is two blocks away, and the One North Kitchen & Bar, which is nine blocks away.

I think it will be a rocky road ahead for TKC to show that the claimed “THE KITCHEN” mark is protectable. Even if it makes it past the genericness hurdle, at the very least it’s descriptive, and it will be difficult to show acquired distinctiveness for several reasons, including the multiple “Kitchen” restaurants in close proximity. What do you think?

Out of curiosity, I also looked around the USPTO for registrations with the word “KITCHEN” that identify restaurant services. It appears the USPTO routinely requires a disclaimer of “KITCHEN” as an unregistrable portion of marks in Class 43 for restaurant services, such as RED RIVER KITCHEN, LIVING KITCHEN, and SECRET KITCHEN. One recent Office Action for the mark SOUTHWEST KITCHEN required a disclaimer of “KITCHEN” and specifically concluded that the word “KITCHEN” is generic for restaurant services. The same conclusion was reached by another Office Action for the mark WOODBERRY KITCHEN.

 

 

This past Sunday, the College Football Playoff Committee unveiled the four college football teams that will be participating the very first playoff in college football. The festivities begin Jan. 1, 2015, with Oregon battling Florida State in the Rose Bowl followed by Alabama and Ohio State duking it out in the Sugar Bowl. However, as the debate regarding who will win the college football playoff continues on television, in the comment sections of websites, and around the water cooler, a different type of college football debate has been ongoing at the U.S. Patent and Trademark Office (USPTO).

Despite the players and teams being a mere three weeks from taking the field, the application to register the COLLEGE FOOTBALL PLAYOFF mark is still on the bench. The application suited up back on March 28, 2013 but is still no closer to registration today. The application includes the following identification of services:

Entertainment services in the nature of television and radio sports programs featuring college football games, exhibitions and tournaments; entertainment services, namely, organizing and staging college football games, exhibitions and tournaments; and providing information, news and programming, scores, standings, statistics, and history, all in the field of the sport of football, via the internet

The examiner initially refused registration on the grounds that the mark was merely descriptive, but included a statement informing the applicant that the mark may be generic in connection with “organizing and staging college football games, exhibitions and tournaments.”

In response, BCS Properties (the applicant) claimed that COLLEGE FOOTBALL PLAYOFF was not descriptive but instead a suggestive mark. It made the oft-asserted but rarely successful argument that a component of the mark has multiple meanings and therefore consumers will need to exercise imagination, perception, and thought to determine the exact nature of the services. The applicant conceded that the Examining Attorney’s definition of “college” as “an undergraduate division of a school or university” was a possible definition, but argued that “college” can also be defined in other ways, including (1) a body of clergy living together and supported by a foundation; (2) a building used for an educational or religious purpose; and (3) a preparatory high school. The implied argument is that consumers encountering the COLLEGE FOOTBALL PLAYOFF mark won’t be certain whether these football tournaments involve university students, clergy roommates, buildings, or high school students. I don’t find this argument convincing, but maybe that’s just me.

The real emphasis of the response was on a claim of acquired distinctiveness. The applicant submitted numerous examples of news articles, websites, Facebook Groups, and evidence regarding viewership of the last BCS Championship Game (25.6 million viewers).

Overall, these are substantial numbers, but the Examining Attorney called an audible and denied the claim of acquired distinctiveness. Instead, the Examining Attorney issued a refusal on the basis that COLLEGE FOOTBALL PLAYOFF is a generic term for “college football tournaments.” Determining whether a mark is generic involves a two-step inquiry: (1) what is the genus of the services at issue; and (2) does the relevant public understand the designation primarily to refer to that genus of goods and/or services?

In support of the refusal, the Examiner relied upon the following:

  • The identification of services includes “college football” as part of the services;
  • Numerous news articles describe the mark as identifying a playoff system for college football; and
  • An article where the director of the College Football Playoff is quoted as stating: “We decided to call the playoff what it is – the College Football Playoff.

Because advertising and sales cannot turn turn a generic term into a trademark, the claim of acquired distinctiveness is moot if the term is generic. In the alternative, the Examiner maintained the merely descriptive refusal, noting that given the highly descriptive nature of the mark, the evidentiary burden to prove acquired distinctive is much greater than it might be for less descriptive marks.

After failing to move the chains with its first response, the applicant filed its second response. It argued that the genus of goods is not “college football playoffs” but instead simply “football.” It also argued that the public does not use the COLLEGE FOOTBALL mark to refer to “entertainment services.” Notably, the applicant provided no evidence to support this claim. With regard to potential acquired distinctiveness, the applicant submitted evidence that its twitter account had over 30,000 followers, its Facebook page had more than 200,000 fans, and noted the numerous news articles referencing the upcoming college football playoff. Besides, the applicant argued, third-parties could use a number of other names for a “college football series,” such as “Collegiate Football Tournament,” “College Football Showdown,” [and] “University Football Series.”

It was a good effort, but ultimately unsuccessful as the Examiner issued a final refusal on August 26, 2014. The examiner noted again that the phrase “college football” is in the identification of services and therefore the proper genus is not simply “football.” The Examiner also noted that the evidence supplied by the applicant makes clear that its mark will be used to identify “those college football games that come after the end of the regular scheduled season that will be used to determine the college football champion.” The examiner also rejected the evidence of acquired distinctiveness, stating that it merely showed that college football itself was popular, not that the mark had obtained acquired distinctiveness.

BCS Properties will have another shot at filing a response to try to change the examiner’s mind. Unfortunately though, the application may have been doomed as soon as the name was chosen. It seems like ages ago, but after the announcement of the new name, there were laughs had as to the less-than-creative name (for example, here, here, and here). Most of the chuckling was that the BCS paid a marketing firm to come up with the name (Premier Sports Management, for the curious). For what it’s worth, I don’t blame the marketing firm. As some of the articles point out, after the BCS era, the goal may have been to simply find a name that the public couldn’t trash.

But even though the hurdle was going to be high, the applicant got off to a false start by including the phrase “college football” in the actual identification of services. The fact that the applicant’s director was quoted as stating that the College Football Playoff name was chosen “because that’s what it is” certainly doesn’t help either.

Yet it isn’t a lost cause. These types of office actions require thoughtful and well-planned arguments, and that planning begins with the application (i.e., not digging yourself a hole). Trademark examination is a unique situation as it isn’t adversarial in the same sense of a lawsuit. Instead, the examiner is both the adversary and the judge. In light of this, organization and word choice can make or break a response, in part because trademark law requires a highly subjective analysis. It isn’t about “tricking” an examiner, it’s about defining and framing the legal inquiries and burdens in a way that makes sense with your particular facts.

The applicant has until February 6, 2015 to respond to the final office action. This gives the applicant additional time to gather evidence regarding public understanding and use of the claimed COLLEGE FOOTBALL PLAYOFF mark. However, I’ve got a feeling that even if BCS is unsuccessful at changing the examiner’s mind, the game will extend into overtime at the Trademark Trial and Appeal Board.