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.