More on the Sprinkles vs. Famous Cupcakes lawsuit

Eater LA recapped the whole Sprinkles vs. Famous Cupcakes lawsuit, and also linked to Ryan Gile, Las Vegas Trademark Attorney, who makes me wish I had finished law school so I could chime in here with some legal knowledge. Gile writes:

However, Sprinkles was able to overcome the PTO’s two refusals to register the design on the Principal Register (a non-distinct configuration refusal and an ornamental refusal) by changing the basis of the application to Section 2(f) and providing evidence that the mark had acquired distinctiveness (i.e., customers had come to associate the dot design with Sprinkles). Sprinkles’ "nested circle design" for "bakery goods" was registered April 3, 2007.

While a quick view of Famous’ website didn’t reveal any particular appropriation of Sprinkles’ “dots” that I could see, Famous, which has its own unique group of flavors (here), does offer its customers the choice of various “toppers” on their cupcake. Is Sprinkles claiming that no other cupcake makers can put any kind of candy heart or other design in the center of a cupcake?

Famous Cupcake's Toppers

In a separate matter, we can report that AliBeth Cakes changed their name from SprinkleSprinkle after being contacted by Sprinkles. Sprinkles public relations spokesperson Victoria Stein of Sprinkles told us via email on February 27, 2008:

As for SprinkleSprinkle, we had several conversations with the owners in which we asked them to change their name, emphasizing the likelihood of marketplace confusion. We even offered them the opportunity to keep the name for a transitional period (given that their business is still in its infancy and they haven't yet invested in the brand). Unfortunately, they rebuffed all of our offers, so after trying to resolve the situation amicably for some time, we were left with no other recourse in order to protect ourselves. Trademark owners have a legal obligation to take steps to avoid future customer confusion arising from others using misleading names. As you know, we sell our cupcake mixes in 6 locations in the New York metro area and are looking to open a NY location in the near future.


Tanya said…
When I read the previous post about this lawsuit, I went to the Famous Cupcakes website to see what the fuss was about. I noticed the same thing you did, with the decoration in the center. That's all I found similar to Sprinkles cupcakes. It seems rather silly to me.

The other thing I noticed were a few dot images on FC's site, which could look like Sprinkle's "dot" design.

I don't know, it's just my opinion, but it seems rather frivolous to start suing eachother over how to decorate a cupcake. If it was a complete copy, I could understand, but it doesn't seem like it.
Anonymous said…

Sprinkles filed a lawsuit against Sprinkles, Sprinkles
Anonymous said…
The nonsense is ridiculous. As far as I am concerned, I'd like to see their foolishness land them with fewer customers. All of a sudden a sprinkles cupcake doesn't leave such a good taste in my mouth!
Lorie said…
When i went to the Famous Cupcake site (after reading your original post) what I saw is the pattern repeated on the website, not the actual cupcake. If you look at the Famous Cupcake logo you you posted even in this post, the nested circles are behind the name Famous Cupcake. They use that same pattern on their to go boxes. I am guessing that THAT is where Sprinkles is having their issue, but honestly I cannot imagine they will win this case. But stranger things have happened.
Anonymous said…
Sprinkles pursued Lilly Janes and they settled out of court.

How many cupcakes stores have Sprinkles threatened, harassed, sued or demanded that they own something, that is not ownable?

Baking and selling cupcakes is about warmth, friendship, community and putting a smile on someone's face. The Sprinkle's TEAM is about big business and their goal appears to put small bakeries out of business.
Anonymous said…
Here's a question, did the lawyers and judge(s) actually try to bite into one of these sprinkles 'exclusive dots'? Those are the hardest, most unpleasant things I've ever tried to eat. I stopped trying, in fact, for fear of breaking a tooth!

As far as I can see, Sprinkles is just very upset that they aren't taking over the world with a Sprinkles shop on every corner. That was/is clearly their intent, and it's simply not happening!

It's a bit sad, really, that they can't be happy with the amazing success they do have!

Business tantrums and whiny lawsuits are very unattractive.
Anonymous said…
I don't know why anyone would want to 'steal' the Sprinkles design....if it's even possible to steal a cupcake decoration idea. I hope they don't win their lawsuit since it seems incredibly frivolous.

I've never tried a Sprinkles cupcake since I don't live in America, but every time I see one I think 'that looks kind of like a crude drawing of a boob'. Anyone else? ....Maybe it's just me.

P.S. I'm a girl by the way. Not a 14 year old boy.
Anonymous said…
screw sprinkles.
it's like they're trying to be the starbuck's of cupcakes.
trademarking a cupcake decoration... and not even a very original one? that's just bull.
i'll support my neighborhood bakeries - not some chain that obviously wants to become a cupcake behemoth, thank you very much.
Seattle Sue said…
Gosh, I'm amazed by the negative tone of many of the posts. But to my eye, the same eye which helped develop my little corporation's design, FC is definitely using a key design element that clearly belongs to Sprinkles.

It's not about cupcakes or teamwork vs corporate greed or anything of that nature. It's about the integrity of intellectual property. The Sprinkles design is distinctive and FC's use of it creates the impression that the two companies are related. Sprinkles gave them ample opportunity to change it but they did not.

I simply cannot agree that it is okay to steal another person's design. Regardless of whose cupcakes are better tasting, Famous Cupcakes is wrong to use any element of Sprinkles' design, to refuse to talk about it, and to persist in using it.

I's jess sayin'...
Anonymous said…
You simply can't own a dot, Seattle Sue.

If anyone owns the concept of a dot - its TARGET and they have registered it.

I encourage Target to sue Sprinkles.

But many, many cupcake stores use dots - if you look at the websites listed on this blog. There are only so many elements that belong to the shape of a cupcake.
Anonymous said…
Indeed, everyone is free to have their take on this and so many matters, but Seattle Sue, it's rather short sighted not to consider that cupcakes, and indeed cupcake sprinkles, candies and such have been around longer than the Sprinkles couple have been alive.

Should my grandma start suing Srpinkles? She use to put her own little candy dots on top of her cupcakes back in the late 50's early 60's. I know this because my mom's first reaction upon seeing a Sprinkles cupcake was "wow, those look just like mom's cupcakes".

It's very tempting to get caught in a mind-set that somehow history began on the day of one's birth. Too often, we 'younger generation' tend to ignore what has been before, and what just may come after our little, short life.

I completely respect all opinions here, but I am quite hesitant to warm-up to anyone that demands THEIR way when that way is simply not completely honest.
Anonymous said…
Having been one of those small cupcake stores that We were sued by Sprinkles for totally frivolous reasons - it cost a lot of money to defend ourselves. We chose not to rollover and adhere to a ridiculous list of Sprinkles demands - including they owned the color brown - for their walls!

I think the Sprinkles Team are really aggressive and represent nothing good about what cupcakes are all about. And they certainly budgeted a lot of money to protect their dot, the color brown and anything they feel worthy of suing over.
Anonymous said…
Why isn't anyone being honest here... Famous Cupcakes copied the Sprinkles dot... it is very obvious. If they own the trademark, modern dots and cupcakes, then Famous Cupcakes should stop using it. It isn't frivolous if someone is stealing your trademark.
Anonymous said…
Honestly -- Sprinkles applied twice for a registration for the dot "idea" and was rejected. Their registration is pending and NOT approved. Target owns a registration for the modern dot and if you look at any Target logo their dot has a registration mark everywhere it appears.

I do not believe Famous Cupcakes copied Sprinkles dot. They don't use a dot on their cupcakes - and if using the concept of a dot for decoration, or on their packaging or on their walls and website is against the law -- that would certainly leave the world of cupcake stores wide open to have Sprinkles sue anyone, over using a dot - ridiculous idea!

I think these actions by Sprinkles are a total nuisance to make the competition go away via expensive litigation and that Sprinkles should get only bad publicity for it. I think Sprinkles has a lot of arrogance that they think they can own something already owned by Target.
Anonymous said…
Is Sprinkles going to sue:

because these use the name Sprinkles - not that you have high lighted on your blog?
Anonymous said…
i also belong to a small business who was sued by sprinkles. id love to see this become a huge backlash that hurt their business. i felt trampled because we didnt have a law firm on retainer. they use this firm to sue anyone for anything they can tie to possible infringement on their trademarks.
which by the way, i was told their trademarks they do have are very weak and we could contest that itself. sprinkles are a product used in baking yet dont you DARE mention them, sprinkles owns that word now!
i walked away feeling bitter towards them as if they were a giant corporation. thats not how i should feel about a bakery.

i expect to see many more cases like this with sprinkles appear, and information on past ones with confidentiality agreements!
Anonymous said…
For all of the cupcake stores sued by Sprinkles, I wish there was a private forum to discuss.

For us, it was a brutal and very costly experience. We were open 6 weeks and served with papers in front of our employees.

No one who starts a small business, let alone a cupcake store should have to go through this experience.

We made a conscious decision not to publicize our case and perpetuate negative stories - and also, because we thought Sprinkles was so vindictive they would sue us again.

I have read the Famous Cupcake lawsuit and it intimates that they have gotten other cupcake stores to stop using "Modern Dot" - who are they?

All of those sued by Sprinkles out there - anyone have an idea how we can discretely meet up?

Very Interested Party
Anonymous said…
I was following this blog and you completely edited it and took off already posted items?
Seattle Sue said…
Having a law firm on retainer is part of some business plans and represents a certain style of doing business. Obviously that firm is going to be aggressive in 'giving value' to their clients - which means exactly this kind of stomping on as much competition as possible.

The other thing they're doing is seeing how much of what they can register as a trademark. As has been observed, they've stuck their corporate toe in the water with 'ideas'. Well, of course this will be rejected because ideas cannot be trademarked or patented; only designs and devices can be. For designs, there are elaborate and very specific descriptions of dimensions, proportions, and wavelengths of colors. The above is why I did not trademark my logo, I copyrighted it.

The traditional defenses against getting squished by these tactics include the use of your own surname as the name of the bakery (Florsheim shoes, anyone?) and avoid trying to use a distinctive design. For example, if you use dots, use 2 or 3; use squares, triangles, globs; try to develop a larger repertoire of designs. In my town, the best bakery is Borracchini's and it's products are so distinctively good that you can taste the difference and are willing to drive out of the way to shop there.

After all, if the only thing distinctive about a food product is its appearance, it's in need of the barracuda plan anyway. LOL

Anonymous said…
Welcome to the Oprahtization of the cupcake world. Sprinkles would be a nobody if it weren't for Oprah and her celebrity endorsement. The owners of Sprinkles were what, bankers before they got out of the banking business and applied their business acumen to cupcakes. The lesson to be learned is that if you want to go into business and think you have a great name, hire a qualified Intellectual Property attorney to do a trademark and possibly a copyright search. Otherwise, I think it's deplorable that Sprinkles is preying on small businesses that may or may not have the financial backing and celebrity endorsement they have. For myself, if I have to eat an overpriced cupcake, it will NOT come from Sprinkles. I agree with a previous poster, they are trying to be the Starbucks of cupcakes. I can make my own.
"All of those sued by Sprinkles out there - anyone have an idea how we can discretely meet up?"
I haven't been sued by Sprinkles but I would certainly appreciate being part of the discussion. Count me in!