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?