CupcakesTaketheCake

Wednesday, December 12, 2007

Copyright, Bakery Names, and Johnny Cupcakes

A quick perusal of our links at right will let you know that it's a crowded market when it comes to bakery names. There are multiple Babycakes (which prompted Portland's Cupcake Jones to change its name from Babycakes to avoid confusion) and there are many similarities.

Yesterday I came across an item that made me wonder about the legal implications of a bakery which is also changing its name. Second Helpings, the food blog of New Jersey paper The Bergen Record, reported that New Jersey bakery Pane ed Acqua was changing its name to...Johnny Cupcakes. They even have a website.

Pane ed Acqua, the cupcake-centric bakery featured here, in The Record, on Ch. 7 and pretty much everywhere else in its first year, has been sold.

Its new name: Johnny Cupcakes. And its owner: Johnny Manganiotis.

And the creepy looking burger you see above: That's the cupcake mini burger with fries -- a sign that Johnny Cupcakes is daring to be different.

The mini burger with fries has become one of Manganiotis' hallmarks -- three cupcake tops, with lettuce icing, chopped cupcake fries and red icing ketchup. It tastes, well, like cupcakes and icing.


The problem? Well, there already exists a (much-loved) Johnny Cupcakes, the famed Boston clothing company, and John Earle has trademarked Johnny Cupcakes. This Johnny Cupcakes has been featured on NPR, MTV, and in other media, and has been selling t-shirts since 2002.

This is what is seen on the only current page of myjohnnycupcakes.com:



This is a photo of the man who goes by Johnny Cupcakes:



This is what the former sells: (and cupcakes - this image is from Second Helpings)



This is what the latter sells: (the t-shirt, not the man)



I consulted an attorney friend who said:

It strikes me as noteworthy that the second JC firm didn't do a trademark search for the name, sp. since they were going to be at a website. Similar or even identical trademarks existing in geographically discrete or insulated markets-- e.g., a purely local Babycakes store in Pierre SD and one with the same name in Del Rio TX --won't usually give rise to infringement, since there's almost no possibility of confusion. But websites make a difference, since both JC firms are now national and competing in the same market. Moreover, close website names increase the possibility of confusion and for claims of "typosquatting"--- setting up a website designed to harvest hits from misspelled searches for a known site. A trademark search should be almost automatic in any metro market, and all the more so where there's a website involved.

The second firm might be able to insulate itself by having a website name that's very different from its store name-- e.g., jayceegreatcakes.com or something like that.


Update: From a California cupcake-loving attorney friend:

The quick & dirty is this: You can't COPYRIGHT a name. You can only trademark it. Copyright is only for artistic works, not company names and/or logos.

And the basis for TM infringement is always consumer confusion. If the consumer would believe that the dude selling shirts is the same dude who opened an ACTUAL cupcake company inn NJ, you might have a basis for infringement.

The original Johnny Cupcakes DOES indeed have a registered TM with the uspto (since 2006), but it is ONLY in the clothing category. He does NOT own the TM for food. One you register a mark, you don't own it for all time in every possible use. You only own the mark for that sector you have registered it for.

here's the original JC's registration info

Thus...since the owner of the new bakery is technically named "Johnny" and he does, in fact, sell cupcakes, he probably has a pretty good case for being able to register/use the name himself in the food category. Again, the original JC can always "oppose" the TM registration, but he needs to show valid potential for consumer confusion.

That's my 5-min TM information.
*The foregoing is for informational purposes only and is not intended to be construed as legal advice and does not form a legal relationship between any of the parties who access this information.


Johnny Cupcakes emailed me yesterday in response to my query and wrote:

I'm hoping it's a mistake. Although, they must have known about me. People usually research a name before making it your company's name. If the name of their bakery is Johnny Cupcakes, they had to of tried registering for JohnnyCupcakes.com before myjohnnycupcakes.com. I've spent a large portion of my life building up my unique name and brand from scratch. Including paying heaps of hard earned money to protect my name and logos. You can't just go and open up a bakery named Ralph Lauren, Marc Jacobs, Tommy Hilfiger, etc. It would confuse so many people. In addition to tarnishing someone's name/brand, the new bakery confusion would start making profits too. It's trademark infringement and intellectual property damage. This is a bummer and It leaves me no choice but to forward the website and information of
this New Jersey bakery to my Trademark Attorney.


I later got a phone call from Johnny Cupcakes saying he had spoken with the people behind the New Jersey Johnny Cupcakes, and they are trying to work something out. So stay tuned!

Some of you will recall that in January 2006 Johnny Cupcakes was all over the blogosphere and some newspapers with his claim that Urban Outfitters stole his t-shirt design of a plane dropping cupcake bombs.

And if any other lawyers or legal types want to weigh in in the comments, please do.

As for bakery owners - have you copyrighted your name? Share your story with us!

2 comments:

Violet said...

Looks like you got an update from a lawyer friend already explaining this, but there are 45 "International Classes" of Trademarks and Service Marks. (See: http://www.uspto.gov/web/offices/tac/tmfaq.htm#Application018)

Food is Class 43, a Service Class. Clothing is Class 25, a Goods Class. My guess is there's no infringement as it's two different classes. Note, to obtain a Trade/Service mark, you must show proof that you are using that mark in commerce in the Class you are applying for. (In other words, Johnny Cupcakes the clothing company wouldn't be able to file in the food class unless they could prove they were selling food.)

Cakespy said...

I have wondered about this (ummm, Ray's Pizza!?). I thought this was a fascinating article! I'm interested to see how it all plays out.