Something From “Nothing”

Nothing Bundt Cakes has built a business around bundt cakes. Anyone with a bundt pan can bake a bundt cake — Nothing Bundt Cakes, like any business, needed something to differentiate itself from other bakers, and found it in the way it frosted its cakes:

Nothing Bundt Cakes protected its unique design as its trade dress, and getting a federal trademark registration was the icing on the cake:

Nothing Bundt Cakes now has over 300 franchise locations throughout the United States and Canada, which collectively earn over $100 million annually in revenue. When All About Bundt Cakes opened a bundt cake business in Dallas-Fort Worth, and copied Nothing Bundt Cakes’s distinctive frosting pattern:

Nothing Bundt Cakes couldn’t stop another bakery form selling bundt cakes, but it could protect the distinctive elements that it purposely incorporated into its product, and the 21 franchisees it had in the area. Nothing Bundt Cakes sued All About Bundt Cakes in the Easter District of Texas [4:20-cv-00813-SDJ, filed 10/22/20]. Nothing Bundt Cakes sought a preliminary injunction, and when Anything Bundt Cakes failed to appear at the February 12 hearing, the Court granted the preliminary inunction.

Even a business with a relatively simple product can create value by making its product distinctive, and protecting that distinctiveness. The key is to develop unique, non-functional features that customers can rely upon to identify the business and its products, and protect those features, for example with a federal trademark registration

Biting the Bulleit

In a complaint recently filed in the Southern District of New York (16 CV 09747), Diageo North America, Inc., makers of BULLEIT bourbon sued Sazerac Company, Inc., alleging that Sazerac’s DR. MCGILLICUDDY’S HONEY WHISKEY infringes its trade dress:

bulleitTrade dress is a combination of features that the owner believes makes its product.  Diageo identified its trade dress as comprising:

  • Clear canteen-shaped glass bottle with rounded shoulders;
  • Embossed brand name on the top two-thirds of the bottle;
  •  Arched text in the top line of the embossed brand name;
  • Rectangular label on the bottom one-third of the bottle;
  • Product trademark (e.g. “BULLEIT BOURBON FRONTIER
    WHISKEY”) above the product designation (e.g. “KENTUCKY
    STRAIGHT BOURBON WHISKEY”) on the label;
  • Text divider with arrow and ball shapes between the product trademark and product designation on the label;
  • Border of waved lines on the top and bottom of the label; and
  • Border of waved lines around the bottle cap.

bulleit-2Diageo asserts claims for infringement of its registered trademark, trade dress infringement, federal dilution, state dilution, common law trademark infringement and unfair competition, and deceptive trade practices.  Diageo had the foresight to obtain Reg. No. 3,075,812 in on its trade dress: The registration of its trade dress will certainly help, but Diageo would probably also have benefited from registrations on some of the other features it regards as its trade dress.

The courts will protect trade dress in the absence of trademark registrations, but the many benefits of registration, including the presumption of validity of the registered mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark (15 U.S.C. §1115(a), are a strong motivation to register important trade dress features long before they are taken by others.