"Cronut" Craze Inspires Trademark Filing Frenzy

Specimen of Use Submitted By Ansel to the Trademark Office

Greenwich Village New York pastry Chef Dominique Ansel, of the Dominique Ansel Bakery, claims to have launched the "CRONUT" -- a delectable pastry that is half-croissant, half-donut, in May 2013.  The line that forms outside the bakery each morning for the Cronut is reportedly 2 1/2 hours long.  Fans claim that the Cronut will "change your life."

Consequently, Ansel has filed for a federal trademark registration on the term as used in connection with baked goods. Wikipedia acknowledges Ansel as the creator of the pastry, and attributes the term to him, despite acknowledging the proliferation of imitators.  

Indeed, only weeks later, a Massachusetts individual named Stephen Foung filed an Intent-to-Use application with the Trademark Office for "THE CRONUT HOLE" as it would be used in connection with retail bakery shops.  Not long after that, a Texas establishment emerged, claiming that it intends to use the term "CRONUTS" in connection with baked goods and downloadable recipes. Bakery publications have dubbed the situation a "Cronut trademark scramble."

But Rosario Auddino of Auddino Bakeries, writes on that Ohio pastry shop's website:

The cronut !!!! WHAT ???? The DOUGHSSANT has been in Columbus/Hilliard Ohio for going on 20 years now.. 

Roy created this one night when he was covering a shift for an employee...New York can eat there hearts out ....The cronut has nothing on the...The DOUGHSSANT... 

Auddino similarly filed for a federal trademark on DOUGHSSANT in May, claiming a first use in commerce in 1994.

No word yet from the USPTO on who owns the trademark CRONUT, nor from critics on who makes the best pastry, but we will accept free samples and render a verdict on the latter.

Can a Valid Trademark Exist in Connection with the Illegal Drug Trade?

Washington State-based Diego Pellicer claims to be the first retail brand in the United States focused exclusively on "legal, premium marijuana for pleasure and creative pursuits."


On its website, Pellicer states:  "It is important for us to emphasize that everything we do, is and always will be, completely legal. While the federal government has not yet weighed in officially on how it will respond to Washington State’s Initiative 502, we are committed to building our business under the assumption that the federal government will permit us to operate in the states of Washington and Colorado, and eventually other states, as they adopt their own specific initiatives.  We believe the writing is on the wall that marijuana will become legal in the entirety of the US in the next decade or so."


However, Pellicer's trademark attorneys may have gone too far, at least if the U.S. Patent and Trademark Office has anything to say about it.

In a recent "Intent-to-Use" trademark application filed with the U.S. Patent and Trademark Office, Peter M. Lukevich, Esq. of Apex Juris PLLC, filed a sworn statement that Diego Pellicer has the bona fide intent to use the trademark "DOT BONG" in the next six months in interstate commerce, in connection with, among other things, "medicinal herb extracts" in International Class 5 and "retail store services featuring medicinal herb extracts, dried herbs, herbs for smoking, cigarette rolling papers, smoking pipes, lighters for smokers" in International Class 35.

The Trademark Examiner who was assigned to Pellicer's application has initially refused registration.  The Examiner cited various cases and laws providing that, to legally qualify for federal trademark/service mark registration, the use of the proposed mark in commerce must be lawful, and that any goods or services to which the mark is applied must comply with all applicable federal laws.

The Examiner noted that the federal Controlled Substances Act ("CSA") expressly prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and marijuana-based preparations.

In addition, the CSA makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, i.e., “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under [the CSA].”  21 U.S.C. § 863.

Therefore, the Trademark Office initially concluded that, because Pellicer's goods and/or services appear to be expressly prohibited by federal narcotics laws, the applied-for mark, as it is apparently intended to be used, would not be a lawful use in interstate commerce.

When we spoke with Pellicer's lawyer by telephone today, he noted that there are medicinal herb extracts other than illegal narcotics that could conceivably fall within Class 5. The Examiner had cited Pellicer's rather extensive website discussing the company's affinity for, and advocacy of, marijuana.  It is yet to be seen if the Examiner becomes convinced otherwise.

Furthermore, Pellicer's lawyer notes that there are discussions underway between Attorney General Eric Holder and the States of Washington and Colorado regarding how the federal authorities plan on handling the states' respective initiatives to legalize marijuana.  

Notwithstanding these ongoing negotiations, it appears relatively unlikely that the entire United States would witness a complete reversal of the decades-old policies criminalizing marijuana in the next six (6) months.

There is sketchy precedent for the issuance of trademark registrations on otherwise banned narcotics, and those precedents were short-lived. In 2005, the Trademark Office issued a registration for "MAUI WOWIE" in connection with a variety of "smoking articles" in Class 34.

However, in 2012, that trademark registration was apparently cancelled after the Registrant did not file an acceptable statement of use. 

It is worth noting that in 2005, the Trademark Office had apparently accepted a specimen of the applicant's use that looks like a medicinal herb prohibited by the CSA.

Disney Offends Latinos With Bid to Trademark Traditional Holiday Name

On May 1, Disney filed an application with the U.S. Patent and Trademark Office to protect the phrase "Día de los Muertos," or "Day of the Dead," across multiple platforms. 

Disney subsidiary Pixar is apparently releasing a film -- with the working title "The Untitled Pixar Movie About Dia de los Muertos" -- this fall.

Here's the issue -- Día de los Muertos is a traditional holiday celebrated on November 1 and 2 in Mexico and across Latin America.

People honor the lives of lost family members or friends by building altars, holding processions, decorating gravesites and placing offerings for loved ones.

Based on its trademark application, Disney hoped to secure the rights to the title "Day of the Dead" and such themed merchandise as fruit preserves, fruit-based snacks, toys, games, clothing, footwear, backpacks, clocks and jewelry.

But the Latino community has raised serious questions about the application on social media.

On Tuesday, a petition was started on Change.org to stop the Disney effort, stating that the attempt to trademark Día de los Muertos was "cultural appropriation and exploitation at its worst." As of today, the petition has over 21,000 signatures.

In 2003, the Day of the Dead celebration was entered on the UNESCO list of the Masterpieces of the Oral and Intangible Heritage of Humanity.

"The Indigenous Festivity dedicated to the Dead are deeply rooted in the cultural life of the indigenous peoples of Mexico," UNESCO has said.

But after the backlash, Disney withdrew its application this week.

"The trademark [was] intended to protect any potential title of the movie or related activity," a spokeswoman for Disney said. "Since then, it has been determined that the title of the film will change, and therefore we are withdrawing our application for trademark registration."

Disney did not comment on whether social media reactions directly led to the decision to withdraw the application.  This isn't the first time Disney has sought to trademark a controversial phrase.

In 2011, it tried to secure "SEAL Team Six," the Navy SEAL team that captured and killed Osama bin Laden, seeking exclusive rights for use on items from video games to backpacks. However, after receiving an overwhelming response from critics, Disney withdrew the application "out of deference to the Navy."

Kansas Coffee Shop Targeted By 1980's Hair Band's Trademark Lawyers

1980's Hair Band Twisted Sister in Concert / Wikimedia Commons

Sandi Russell, along with her sister, Nancy Hansen, are two sisters operating a small coffee shop in Mission, Kansas.  Their coffee shop's name is "Twisted Sisters," and their domain name is www.TwistedSistersCoffeeShop.com.


Russell recently reported that she received a formal cease and desist letter telling them to change the name because it has been trademarked by the 1980's hair band Twisted Sister which owns and operates www.TwistedSister.com.


According to the letter, the Twisted Sister musical group coined the name “TWISTED SISTER” in 1973, and “the
juxtaposition of those two words never appeared prior to the creation and adoption of the mark by the band.”

Continuously since then, the band has had extensive media publicity and exposure of its mark, having released at least 12 full albums and 4 DVDs since 1973 under the TWISTED SISTER mark, which have been distributed and
 sold throughout the United States and worldwide. 


Consequently, according to its lawyers, the band’s trademark is well-established and legally deemed "famous."

It is true that Twisted Sister has a federally registered and incontestable federal trademark (1,098,366) issued in 1978, but that trademark only covers: "ENTERTAINMENT SERVICES RENDERED BY A VOCAL AND INSTRUMENTAL GROUP."

The letter notes that the band has been successful in requiring that the Twisted Sister Bakery in Chicago and Twisted Sister Pizza in Massachusetts change their names.

Not mentioned in the letter is that third parties have apparently received numerous approved trademarks for marks using "TWISTED SISTER" (and variants), such as for Twisted Sisters Wine (3,443,617), Twisted Sisters clothing boutique (3,216,315), Twisted Sisters Our Business Is Dyeing colored yarns (3,027,439) and Twisted Sista for hair care products (3,947,150).  All of those are live trademarks that appear to have nothing to do with the band.

Therefore, to establish even a prima facie case of trademark infringement, the lawyers would need to plead that the coffee shop's continued use of the “Twisted Sisters” name in connection with a small coffee shop is likely to lead to consumer confusion as to endorsement, sponsorship or affiliation with the 1980's band.  

This claim would likely be an uphill battle from an evidentiary standpoint, and would probably require an expensive survey expert. One suspects that instances of actual confusion among consumers would be difficult to locate.

However, assuming the trademark is indeed “famous” and worthy of legal protection under the Federal Trademark Dilution Act, the band need only prove that the use of the unauthorized name is likely to dilute, either through tarnishment or blurring, the distinctive nature and fame of the band’s mark.  In this context, this claim may be easier to plead even in the absence of confusion, as there is no doubt that the Twisted Sisters Coffee Shop likely "calls to mind" the 80's band, potentially blurring its distinctive quality.

Faced with the band’s demand that it change its name, the coffee shop’s owners reportedly intend to do just that.  As of today, the coffee shop's website is no longer operational.