Candace Nelson, a judge on the Food Network’s successful show, Cupcake Wars, is in her own battle after suing a Fairfield, Connecticut based business for trademark infringement.  Nelson’s company, Sprinkles Cupcakes, Inc., has filed a lawsuit in Connecticut District Court alleging that Pink Sprinkles LLC of Fairfield has committed trademark infringement based on Pink Sprinkles’s use of the “sprinkles” moniker for cupcakes and other baked goods.  Sprinkles Cupcakes is the owner of a United States trademark registration for the trademark SPRINKLES for bakery goods and retail store services featuring bakery goods.

Simple case?  Not really. Even though the plaintiff has a federal trademark registration, there are plenty of defenses available to our Connecticut neighbor, Pink Sprinkles.  I seem to recall a famous case before the Trademark Trial and Appeal Board rendering the mark “soft and chewy” for cookies merely descriptive of baked goods and thus not eligible for registration.  There are other cases that have held no matter how much money the owner of a merely descriptive trademark pumps into the brand, or no matter how successful the brand gets, it is in the end —well, merely descriptive.  It also appears that the Pink Sprinkles may have other defenses available to it that could level the playing field with its deep-pocketed adversary.

Let’s hope that the case comes to a swift resolution that keeps Pink Sprinkles in business and profitable!

 

 

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James Hastings is an attorney with the U.S. Trademark Trial and Appeal Board Practice Group of Practus, LLP.  He is a certified mediator of the INTA Panel of Mediators, an international roster of select professionals with expertise in trademark dispute resolution.

James is…

James Hastings is an attorney with the U.S. Trademark Trial and Appeal Board Practice Group of Practus, LLP.  He is a certified mediator of the INTA Panel of Mediators, an international roster of select professionals with expertise in trademark dispute resolution.

James is the publisher of Trademark Opposition Lawyer, an online advisory dedicated to helping brand owners understand important issues that arise in proceedings before the U.S. Trademark Trial and Appeal Board.  His commentary has been featured on Corporate Counsel, Law.com, LegalZoom,and other digital publications.

He devotes his practice to trademark opposition and trademark cancellation proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.  Over the course of his career, he has represented the interests of numerous national and international brand owners in trademark litigation matters in both the U.S. District Courts and before the U.S. Patent and Trademark Office.

Prior to his current affiliation with Practus, LLP, James was in-house counsel to a New England-based catalog retailer, where he was responsible for developing trademark portfolio acquisition, protection, and licensing strategies.  Earlier in his career, he was a partner and associate at intellectual property law firms in New York, where he was engaged in trademark portfolio and intellectual property protection work on behalf of well-known fashion and personal care brands.

James is a member of the New York and Connecticut bars.  He has lectured at University MBA programs and legal education conferences on the issues of trademark protection and e-commerce law.

Past and Present Membership

  • International Trademark Association
  • Association Corporate Counsel
  • National E-tailing and Mail Order Organization of America