How generic is your cupcakery? Or is it CUPCAKERY™ after all?

From Ryan Gile:  Is CUPCAKERY a generic term for a cupcake bakery?

At first, the word “cupcakery” seems somewhat suggestive–a unique play on the words cupcake and bakery. However, with the explosive growth of these specialty “cupcake” stores, several other “cupcakeries” have opened up in different parts of the country. Just a quick internet search revealed the following third parties using the word “cupcakery” to identify their cupcake store:

http://www.sibbyscupcakery.com/

http://www.acupcakery.com/

WELCOME

And at least one company (with stores in St. Louis, MO and Knoxville, TN) is using the identical mark as The Cupcakery)

So would most consumers really associate the word “Cupcakery” with a single source–or more likely a merely descriptive term describing a cupcake bakery? . . .

While “cupcakery” may have been a unique word at one time, because The Cupcakery did not pursue trademark protection early (assuming that the company was the first one to use the phrase – a fact I have not verified), such oversight may have resulted in the word “cupcakery” joining the general lexicon as a word identifying a “cupcake bakery” rather than a word identifying a single source of goods and services.

Ryan’s made out a nice case for genericness.  But I think there’s still an argument for the term being protectible, at least in theory–there’s a lot more going on in the case than the genericness question, and you should read Ryan’s whole piece.  It is not usually the case that third party uses, in and of themselves, prove genericness.  A relatively new business that belatedly gets its act together and begins an IP enforcement program can, under some circumstances, recover its trademark, as long as it really is the senior user (and sometimes even if it’s not).

Overcoming such a problem may not be easy.  In the CUPCAKERY case, involving a former employee accused of violating all sorts of agreements and then opening up a competing business using the CUPCAKERY name, it may be easier than in other contexts.

Anyway, it’s a fitting dessert to the week, especially now that Passover is behind us!

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Ron Coleman

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