The image at right is taken from an actual federal trademark registration. U.S. Trademark No. 1,809,410 to be precise. It was registered in 1993 by Eat’n Park Restaurants of Pennsylvania for “baked goods; namely, cookies.” In other words, Eat’n Park sells smiley-faced cookies in its restaurants.Cookies By Design, the trade name for Texas-based Crumb Corps, LLC, also sells smiley-faced cookies as part of its mail-order “cookie bouquets.” The company has been in business since 1983 and began franchising in 1987.
Eat’n Park sued Crumb Corps in federal court on December 31, alleging multiple counts of trademark infringement, trademark dilution, and unfair competition.
Eat’n Park claims ownership of not just the smiley-face design but the word “SMILEY” itself when used in conjunction with the sale of cookies. Under U.S. Trademark No. 2,108,164, Eat’n Park’s intellectual property rights include the use of “SMILEY” to describe any “sugar cookie having raised design of a smiling face sold in restaurants for consumption on or off the premises.” Eat’n Park has a third trademark that also covers pancakes. No word on who controls smiley-faced waffles.
According to Eat’n Park’s federal complaint,
Crumb Corps sells and offers for sale a smiling face cookie, under the name “Smiley Faces” which includes a design that is confusingly similat to the registered trademark of Eat’n Park. Crumb Corps’s “Smiley Faces” design cookies are directly competitive products to the Eat’n Park SMILEY smiling face cookies. Upon information and belief, the Crumb Corps smiling face design cookies are available via retail stores, catalogs, and the Internet. Eat’n Park has requested that Crumb Corps cease its use of this registered design and the registered trademark SMILEY. Crumb Corps has refused.
Eat’n Park cries it’s been irreparably harmed by the “likely confusion” arising from two companies selling similar-though-not-identical products. Eat’n Park says it’s concerned about customers who might inadvertently believe that Crumb Corps’ “Smiley Faces” cookies are actually “SMILEY” cookies. And the best way to protect consumers is to ban the competition. Then there will be no doubt who makes smiley-faced cookies in this country.
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This is outrageous.
-Mr. Cookie Face
I used to work for Eat’n Park. They are fiercely protective of “Smiley” and this is not their first lawsuit over it. They got pretty annoyed when King’s Family Restaurants introduced the Frownie, which is a brownie with a frowny face on it. I guess there wasn’t much they could do about that one!
Funny thing is that, IIRC, Eat’n Park did not “invent” the Smiley cookie. They bought the “rights” to it from another, much smaller, bakery after the owner saw them and liked them. Something like that. It’s been awhile.
I agree.
Yep, it’s not only copyright and patent that are evil, no offense Silas, but also trademark. See my post Trademark versus Copyright and Patent, or: Is All IP Evil?
Funny thing is that, IIRC, Eat’n Park did not “invent” the Smiley cookie. They bought the “rights” to it from another, much smaller, bakery after the owner saw them and liked them. Something like that. It’s been awhile.
I was close. According to Wiki (which is NEVER wrong!), it was introduced in 1986 by the owner ostensibly as a re-creation of a cookie his mother used to buy him from a bakery when he was a kid.
Eat’n Park can’t handle a little competition. Humans exert free will and don’t need judges limiting choices for us through frivolous law suits.
The essence of trademarks in theory is to benefit buyers, so they know that the Acme Corp. product they’re getting is really made by Acme Corp. So the legitimate question here is whether buyers of cookies are being deceived, that is, whether any buyers would feel mislead if they had the situation explained fully to them, that there are two companies with similar products.
But I think I can guess as to what is going on here. Company A wants to eliminate competition from company B, and its lawyers found a way to exploit trademark law for this purpose. We could get angry at company A for wanting to maximize profit, try to fix the laws (no doubt by introducing even more pages of verbiage to them), or see the problem as being all these complex tools beyond basic property law which companies exploit (including government itself).
Hypothetical:
If Walmart baked their own sugar cookies and frosted them with the rollover happy face, would they get sued?
Cookie Monster not happy.
FYI: They bought the rights from Warner’s Bakery in Titusville, PA. The owner of Eat ‘n Park grew up there. The bakery itself went out of business a couple years ago.
This is crazy but it means that the intellectual property law needs to be revised to prevent such ambiguity in the market. To me it does not mean to rule out all the laws protecting ideas and innovations.
This is the exact same reason why I don’t mess with patents and copyright laws. Not worth the hassle unless your idea is worth north of $10 M
Lawyers are too spendy nowadays…unless you want to mess with Pre Paid Legal or something (laughter ensues). As the above person states, the copyright laws make it hard.
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