On May 19, 2013 Chef Dominique Ansel filed a trademark application with the United States Patent & Trademark Office (“USPTO”) for the trademark CRONUT in International Class 30. International Class 30 includes bakery desserts, bakery goods, breads, etc. Dominique Ansel’s identification of goods specifically named a “croissant and doughnut hybrid” among multiple baked goods, pastries, and other sweets.
Criticism immediately emerged from others in the industry. The criticism came from lay people lacking the knowledge and subtleties of trademark law. Legally speaking, Dominique Ansel followed the correct procedures and was entitled to seek trademark registration for the term CRONUT for the goods identified in his trademark application. In fact, he wisely capitalized on a food trend while simultaneously branding the sweets with a unique trademark. He accomplished all of the above, while beating his competitors to the Trademark Office.
A few weeks after Chef Ansel’s filing, on June 10, 2013 a trademark application was filed with the USPTO for the proposed mark THE CRONUT HOLE. The applicant was seeking to protect the mark for retail bakery shops. The application was filed on an intent-to-use basis. The examining attorney suspended the application on September 21, 2013 on the basis that Dominique Ansel’s application had an earlier filing date, and should the application proceed to registration then the applicant’s mark for THE CRONUT HOLE may be refused under section 2(d) of the Trademark Act (15 U.S.C. §1052(d)) due to a likelihood of confusion with the registered mark.
Soon after, another applicant tried to file on June 17, 2013 for the mark CRONUTS for baked goods. This same applicant filed another trademark application on July 12, 2013 for the same mark (CRONUTS), but for publications featuring recipes. The June 17th trademark filing was suspended similar to the trademark application for THE CRONUT HOLE. The Examiner advised that there could be a likelihood of confusion with Chef Ansel’s trademark application should it register (we know now that it did register). The second application seeking protection for publications featuring recipes will follow the same path although as of yet, the Examining Attorney has not suspended the application due to a request for additional information.
On January 14, 2014, Dominique Ansel’s trademark application for CRONUT in International Class 30 was issued a Certificate of Registration. The French pastry chef has succeeded in registering the mark despite the push back from his colleagues in the industry. He has stated in social media that he is not taking credit for inventing the dessert. However, he states that he has coined the term CRONUT for the popular pastry and the USPTO has validated his branding with a stamp of approval. This means that others in his industry may not use the term CRONUT or a similar term for related goods if it will cause a likelihood of confusion among consumers. There are thirteen factors to consider when determining whether or not there has been trademark infringement.
These thirteen factors originated from the case In Application of E.I. DuPont DeNemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973) . However, in ex parte examination with the USPTO the determination of likelihood of confusion commonly focuses on the marks in their entireties with regards to visual similarities, sounds, connotations, and commercial impressions. The other significant area of analysis involves the relatedness of the goods and/or services. The issue of likelihood of confusion is commonly raised by the examining attorney in an Office Action. See TMEP §1207.01. See also our blog post entitled TTAB Finds Wine And Water Related Goods Under Likelihood Of Confusion wherein we discussed this issue at length. The other factors in DuPont may be considered only if the applicant submits relevant evidence into the record. This is an essential point. We always ensure that our clients have all probative facts in evidence. If you need assistance in determining whether there is a likelihood of confusion between two trademarks, kindly contact one of our NY trademark attorneys for a courtesy consultation. Apparently Dominique Ansel sought trademark counsel and as a result, he has acquired federal trademark protection for the term CRONUT for his trendy dessert that attracts crowds of people, forming lines at 5:00 a.m. around the block in his SoHo neighborhood in Manhattan.