Can you trademark a cupcake name?

That's a question Flickr user mini-cupcakes asks in our Flickr forum:

What is wrong with small business owners today? I am totally flabbergasted! I got a certified letter today from a cafĂ© here (that I really respect) stating that I have copied her names and flavors of cupcakes stating it is causing confusion for her customers and is detrimental to her reputation. If someone implies that you copied something it sounds like you were out to do harm. I have a cupcake I named after my favorite movie “pretty in Pink”, not knowing she has a cupcake named that also, so I get this mean letter in the mail demanding I change my cupcake name and implying I copy her? How crazy is that? If it were me and I had an issue I would go into the business ask to speak with her and just say,”hey, I do not know if you are aware but we also have a …” just be nice about it, I mean we are all small women owned business, are we not supposed to be helpful of one another? I think she may be mad that I have opened the first cupcake centric shop when she used to be the only place you could get good cupcakes (in addition to many other bakery and food items). Am I ranting for no reason? I just feel like if you have a problem with someone, for whatever reason, go speak with them do not send a nasty letter. Any thoughts?

Comments

"M" -- melissa said…
I'm excited to read the comments for this, as for years i had a "create-a-candle" portion of my website selling candles...and two years ago I started getting email after email from some candle company demanding (rudely and not even "legal/professional" style) that I remove that text from my website IMMEDIATELY! They didn't even pretend to be polite in any way.

My website (http://www.spoiledcowgirl.biz) had been a very tiny un-marketed business that I used as a web design portfolio piece for the most part...and this was a total slam to my sense of "goodwill" among small biz owners.

My sympathy goes out to you! I know the feeling exactly. Anger/Shock/Fear and then some...
lindseyQuinn said…
There's a BIG debate of the copyright-ability (word?) of recipes right now.

The link at the bottom is just a sampling, but do Google "recipe copyrights" to look into it more.

http://www.webmasterworld.com/forum44/597.htm
Anonymous said…
You can trademark a name. We had been using the name Cupcake Lane for three years while we were catering with our cupcakes, but when we applied for the Trademark we discovered Cupcake Lane Bakery in Las Vegas. Our attorney suggested we change our name to avoid a lawsuit. Since all the other names we tried were taken, we had to go with something a bit more generic, The Gourmet Cupcake Shoppe, to avoid any further problems when we opened our shop last November. There are so many cupcakeries opening that I can't believe this isn't a bigger problem. I wonder how there can be so many Babycakes without a lawsuit? The first one to the trademarker with $1200 gets the name, unfortunately!
B said…
sounds like the crazy chick at from etsy with the disgustingly-sweet-and-overly-fatty cupcakes in a "jar" .. shes all about getting in your face about the names and likeness of her profuct.
Lucky Red Hen said…
Maybe Molly Ringwald could send a letter back demanding SHE doesn't use HER movie title as a cupcake name :)
Charley said…
That's pretty low, I think. Coming in and explaining why would have been a much better way to handle it. I don't understand how you can claim rights to a name like that anyway a)it's a film and surely she should be getting equally mean letters from John Hughes :) and b), and this is just my opinion, it seems kind of petty. Surely you can't copyright a recipe?
Dave said…
I just did a Trademark search for "Pretty in Pink". There were a few live registrations, but most were for jewelry and clothes. None were for cupcakes or food for that matter. So, this person likely thought it was simply a matter of thinking of it first (debatable) and then just writing or typing a TM next to the name of the cupcake.
Unfortunately, there are a few more important loops to jump through, and a few hundred dollars to spend.

I think shes full of frosting.
Eve123 said…
People can debate the copyright-ability of recipes, but there's no need to debate it, since you can't! On the US Copyright site, you can read this:

"A mere listing of ingredients is not protected under copyright law. However, where a recipe or formula is accompanied by substantial literary expression in the form of an explanation or directions, or when there is a collection of recipes as in a cookbook, there may be a basis for copyright protection. Note that if you have secret ingredients to a recipe that you do not wish to be revealed, you should not submit your recipe for registration, because applications and deposit copies are public records."

Trademarks, on the other hand can be done for titles, and yes, it's ok for her to trademark her cupcake after a movie, since a cupcake isn't in the same category as the movie or other products.
HeatherW said…
This is just insane to me!! Who does she think that she is to do this. You aren't the only two out there with a cupcake or bakery item named "pretty in pink" it is a common name...why sue??

Next thing you know she is going to want to sue you for having a chocolcate or vanilla cupcake!!

It is very sad that our world is so sue happy!!
lainie said…
I wouldn't change anything. If she doesn't like it, she can eat her own! Pretty in Pink is also the name of a strawberry cupcake recipe in a very popular cupcake cookbook (I have it but can't remember the title right now)
Life is so short to be this silly, isn't it? It's cupcakes!
Anonymous said…
I think it is absolutely ridiculous. It's not like you named your business the same name as hers...it's a cupcake....one little cupcake!!! I think she is probably just jealous that you started a business with cupcakes and she's just trying to bully you. Pretty in Pink (by the way I love that movie too!) is such a common name for anything...it's an expression I hear all the time. Your Pretty in Pink cupcakes probably blows hers away!!! Hang in there and don't let people like that get the best of you!
Leslie said…
Thanks for all the comments and support. Luckly I have a very good friend that is a TM attorney and she is helping me get my bus name reistered and some of my cupcake names registered (including Pretty in Pink) so she will soon be getting a letter saying to cease using my name. Sad but true this is what we must go through, the funny thing is I would have probablly changed the name to Duckie Loves Andie if she had just come in and talked to me about it. LONG LIVE SMALL BUSINESS OWNERS!!!! I wish you were all here in my state then I would not be having this conversation.

Thanks
takethecannoli said…
Uh, yeah, unless she has the cupcake name trademarked, she has no right demanding you change your cupcake name. I could understand if you had the same business name and hers was registered, but it's a cupcake! Why get so upset over a cupcake? If I were her, I would have been much nicer about it.
Lucky Red Hen said…
Oooh, I love the idea of Duckie Loves Andie (or Duckie hearts Andie)! You may have something there!!!
stampylisa said…
how about the fact that probably the motion picture studio holds the actual name Pretty in Pink as it's trademark! So I would have a lawyer tell her to take a hike. or change your cupcake name to "The Pink Cupcake that Enrages others" or "the cupcake that started the war" but I do love the Duckie loves Andie name ;)
Leslie said…
I was thinking about using a symbol and calling it "The cupcake formerly known as Pretty in Pink" But I do still love Duckie Loves Andie. The saga continues...
Anonymous said…
We have a registered trademark - that we will call Dxxxx Cxxxx® because we are still attempting to be polite. We have tried to be tactful and polite by contacting the owner of a cupcake shop operating using our trademarked name and then adding the word "cupcakes" after it. We have sent a Certified Letter (see below for sample) and followed up with telephone calls.

We have read posts on your blog regarding other cupcake shops running into similar situations and applaud you for your efforts to educate people on the subject and that an available domain name doesn't mean you are not infringing on someone elses registered trademark. We have invested into hundreds of websites trying to limit/reduce the possibility of this occurring, you just can't cover all the possible variations to keep someone from encroaching on the intellectual property that is protected with registering a trademark.

Initially, we were going to have our attorney send the letter, but then we said "Don't be a D*ck! Let's be nice, kind, and polite." After all, (to your point) we are all small business owners. So, we sent this letter and are including it in hopes that a variation of it would be helpful for someone else:
===================================
Hello Mrs. XXXXXX,

We would like to preface this letter by saying that our goal and intention is not in the spirit of "creating conflict or problems" but rather to find a solution to this situation to enable both of our companies to continue to independently prosper.

We have recently become aware of your company operating under the name "Dxxxx Cxxxx Cupcakes". We are formally notifying you that the phrase "Dxxxx Cxxxx®" is a registered trademark with the United States Trademark & Patent Office (Dxxxx Cxxxx® Reg. No. 3,408,xxx).

Our research indicates that you filed for an Limited Liability Company under "Dxxxx Cxxxx, LLC" in the State of Kansas on September 21, 2007; Registered the Universal Resource Locator for www.DxxxxCxxxxCupcakes.com on October 12, 2007; submitted to inspections by the Kansas Department of Health inspection on October 26, 2007; and reportedly opened for business on or around November 1, 2007. These dates all are superseded by our actual use of the mark “Dxxxx Cxxxx” as well as our Official & Public Filing for Federal Trademark Protection with the United States Trademark & Patent Office for Dxxxx Cxxxx® on July 23, 2007.

The use of our trademarked name in the naming of your business has already caused some confusion amongst our Customers and Vendors while diluting our brand; specifically online through your website rankings and positive & negative blogs that have been posted and frequent sole reference to “Dxxxx Cxxxx” and product quality.

We would like to review and discuss with you an appropriate course of action that might be amicable between both parties and possibly avoid the need for litigation. Please contact us within the next 10 days.

Regards,
===================================

Now after the owner received the letter they attempted an inbound call to our office without leaving a message. We returned the call a couple of days later and have left multiple messages with no response. Not all people respond to the nice guy approach apparently.

In todays internet world, it doesn't take a business in the same town, or state, to have an impact on your business or reputation. Blogs, Flickr, and Google rankings can all have an impact on your brand - even if the internet postings are not done by the individual business. We are still being the "nice guy", but unfortunately it is becoming apparent that we will need to let our legal team earn their retainer.
Violet said…
Leslie,

In order to Trademark a name you have to sign an affidavit affirming that to your knowledge, nobody else is using the name. If this other bakery was using "Pretty in Pink" first, you could not legally sign that affidavit. Just FYI.

Here's the relevant portion of the application: "...to the best of his knowledge and belief no other person, firm, corporation, or other entity has the right to use the above-identified mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in con­nection with the goods or services of such other person, to cause confusion, or to cause mistake, or to deceive..."
Anonymous said…
We last commented on June 18th with the lengthy post....and thought we would give an update. Our "nice approach" with a letter and telephone calls were addressed by the cupcake shop owner hiring an attorney and sending us a very generalized 6 page letter...which prompted us to have our attorney draft a very detailed letter with our use and protections we have taken to secure our trademark.

It appears from where we sit that the cupcake shop owner is spending good money for bad, ours and theirs! Now the path that they have elected to take is a different approach than ours and we are going to most likely file lawsuit against them. Now because of the hassle, burden, damages, brand dilution, etc. we have little choice but to look to them to pay for our attorney fees as well. This cupcake shop had only been open for 5 months when we became aware of them and let them know of their infringement...it isn't like they had been operating for a lengthy timeframe and established a deep rooted clientle. A very basic search with the United States Patent and Trademark Office could have possible prevented this www.USPTO.gov - so please, at a minimum, take a look if you are starting a business. Conduct more than just a Google search before registering a domain name or deciding on that perfect name...it may already be someone elses property.....