nrthshgrl
It goes fast. Pay attention.
Member since 7/05 57538 total posts
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When a dot isn't just a dot (Cupcake wars)
When Ari Gold tries to woo a casting agent in HBO's Entourage, he buys her Sprinkles Cupcakes. That's how famous the brand that former investment bankers Charles and Candace Nelson launched in 2004 has become. The couple have also touted their treats in appearances on the Oprah Winfrey Show, Live with Regis and Kelly, and The Tyra Banks Show.
But success brings imitators, and, in this instance, those imitators have focused mostly on Sprinkles' signature "modern dot" -- two concentric circles made of thin candy strips that sit in the center of each cupcake. Dozens of different colored dots denote the cupcakes' many flavors.
Sprinkles trademarked its dot last year. Copycats, meanwhile, have sprung up everywhere, from California to Malaysia, court filings show.
To combat the alleged imitators, Sprinkles hired IP lawyers at Wilson Sonsini Goodrich & Rosati led by partner John Slafsky. Wilson Sonsini has done food and restaurant IP litigation before, Slafsky says. The firm has represented Grown-up-Soda, a high-end cola company, and Fra'Mani, maker of "hand-crafted" pork products. (The Nelsons worked with the firm during their investment banking days, Slafsky says.)
Since early last year, Sprinkles has filed three lawsuits against alleged imitators and sent takedown letters -- including one just last week -- to nearly a dozen other companies around the world that were using some version of the dot, according to Slafsky and this story in the Los Angeles Times.
Sprinkles has also targeted companies with similar names, including the new Sprinkled Pink Cupcake Couture in Montecito, Calif., whose owner received a letter last week. (Sprinkled Pink does not use the dot design.)
All but one of the alleged dot-poachers has dropped the design without a fight. Famous Cupcakes, which Wilson Sonsini filed suit against last month, has not responded to numerous phone calls from Slafsky and his team about its alleged misappropriation of the dot, Slafsky says.
The complaint against Famous Cupcakes says the company displays the "modern dot design on each and every page" of its Web site. Famous Cupcakes have small, dot-like objects at their center; the Christmas cupcakes have candy poinsettias, the Easter-themed goodies have pink roses or blossoms.
But it's not the baked goodies that are at issue, Slafsky says. Check out the top left corner of the Famous Cupcakes home page, and you'll see a "modern dot"-style logo splashed behind the company's name. It also appears on the company's boxes and the wallpaper at its stores, Slafsky says.
"The most important assets to a company like this are its recipes and its brands," Slafsky says. "It's a big deal when someone is imitating them or copying them in a way that's likely to create confusion in the marketplace."
Management at Famous Cupcakes did not immediately return a call from The Am Law Daily, but company owner Desiree Adl told the Times she couldn't imagine her offerings creating any confusion: "You put their cupcakes with our cupcakes, everyone knows which one is Sprinkles."
source: Law.com
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A trademark dot!
I thought it was interesting but didn't see Famous Cupcakes as creating an infringement as the dots don't signify flavors...
anyone else? Or did I just make everyone hungry for cupcakes?
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LSP2005
Bunny kisses are so cute!
Member since 5/05 19458 total posts
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L
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Re: When a dot isn't just a dot (Cupcake wars)
I think they may be going after brand confusion, that is, someone would go on line and look at FC's webpage and see all of the dots and think oh this must be the dot company webpage(which it is not) b/c the dots look just like what I saw on Oprah.
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nrthshgrl
It goes fast. Pay attention.
Member since 7/05 57538 total posts
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Re: When a dot isn't just a dot (Cupcake wars)
Posted by LSP2005
I think they may be going after brand confusion, that is, someone would go on line and look at FC's webpage and see all of the dots and think oh this must be the dot company webpage(which it is not) b/c the dots look just like what I saw on Oprah.
Right but the dots are on the cupcakes to signify flavor. Also at one point, dont' you have to say "We are blameless if consumers are stupid, can't read & are just going by a dot to buy a cupcake."
It's not like a big M. It's more like a a standard design they're pointing fingers at.
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LSP2005
Bunny kisses are so cute!
Member since 5/05 19458 total posts
Name:
L
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Re: When a dot isn't just a dot (Cupcake wars)
As an example, think of the red and white target bullseye, if someone from another store put that on a cupcake and had goodbuy on the box you could think hum those came from target. Target would prob sue the pants off of another store if they used their design and words.
Another well publicized example of this type of thing is Victor's Secret who was sued by Victoria's Secret. They are in the same industry and I think the courts sided with Victoria's Secret saying that there could be source/brand confusion.
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nrthshgrl
It goes fast. Pay attention.
Member since 7/05 57538 total posts
Name:
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Re: When a dot isn't just a dot (Cupcake wars)
Posted by LSP2005
As an example, think of the red and white target bullseye, if someone from another store put that on a cupcake and had goodbuy on the box you could think hum those came from target. Target would prob sue the pants off of another store if they used their design and words.
Another well publicized example of this type of thing is Victor's Secret who was sued by Victoria's Secret. They are in the same industry and I think the courts sided with Victoria's Secret saying that there could be source/brand confusion.
I remember that case. They are in the same industry with the same product. But one is using it to designate flavors, the other as a design.
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