Trademark For 'Square Donuts' At Heart Of Trademark Dispute Despite It Being Entirely Descriptive

One of the rules that is supposed to keep trademark law from creating language-lock insanity is the prescription against trademarking purely descriptive terms. That's why you get a trademark on Coca-Cola and Pepsi, but not on "soda." It's why "computer" is not a valid trademark term. Were this not the case, companies could simply lock up the language of their marketplaces, restricting terms not to the benefit of the consumer, but purely as a monopolizing strategy.

And, yet, this doesn't always play out in practice. For instance, there is currently a dispute between a company called Square Donuts, that sells square donuts, and a convenience store chain out of Indiana that also sells square-shaped donuts.

Charles Meyer, who represents Richard A. Comer Jr. and his business Square Donuts Inc., said he disagrees with claims by Family Express convenience stores that the Valparaiso-based chain is not infringing on the trademarked name of Square Donuts, which was established as a family-owned business in Terre Haute in the 1960s and now has nine locations in Indiana.

"It's a well-established name, and we want to protect that," Meyer told the Tribune-Star on Monday.

Mr. Meyer misses the point entirely in this response. The establishment of the name of a business, while important, does not in and of itself route around the requirement in trademark law that a mark not be purely descriptive. There are indeed provisions in the law allowing for marks that have taken on a secondary meaning in the marketplace, even if descriptive, but it's difficult to understand how Square Donuts Inc. would qualify. The company sells donuts in the shape of a square and called itself Square Donuts. There's no secondary meaning implied or intended. This didn't keep Square Donuts Inc. from firing off a cease and desist letter to Family Express all the way back in 2006, causing the latter company to eventually look to the courts to declare that it was not infringing in its use.

It was in January 2006 that Comer's family-owned business sent a cease and desist letter to Family Express claiming trademark rights for the "square donuts" name. Family Express claims that it responded about two weeks later explaining that no infringement existed for its descriptive.

In January 2012, the Terre Haute business obtained an Indiana State trademark registration for "Square Donuts Inc.," and received a federal trademark registration in May 2013. The "word marks" registered include not only the "Square Donuts" words, but also the well-known design of a square with a hole in the middle and a bite taken out of the right side.

And then, earlier this year, the USPTO declined Family Express' trademark application for "square donuts", not because of its descriptive nature, but because it had already granted a similar mark to Square Donuts Inc. As per usual, the ultimate fault for this silliness can be laid at the feet of the USPTO. I'm trying to think of a better example of how the trademark office just isn't paying any attention than the fact that it granted a trademark for "square donuts", a combination of an adjective and a noun, likely the purest example of describing something in the English language.

So way to go, guys. If you had just bothered to keep to the rules of trademark law and its purpose, we wouldn't have to read about to companies bickering over square donuts. Oh well...

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