"TM" this, "TM" that....
The Stay-Puft Marshmallow Man wreaked some havoc in his time, but who would have thought that his inspiration — the Pillsbury Doughboy — would act the part of a veritable Gozer the Destroyer himself, at the expense of a funky new-age bakery?
A few weeks ago, the founder of a Salt Lake City-based bakery, My Dough Girl, got a letter from General Mills, the conglomerate that owns Pillsbury. To the 45-year-old entrepreneur’s surprise, the food giant had written to inform her she needed to change the name of her business — claiming it was too similar to Pillsbury’s famous doughboy mascot — or she risked facing legal action. Cromar decided, essentially, that was just the way the cookie crumbles. “I started baking cookies as a way to bring happiness to myself and others, so I really didn’t need this to become some canker on my existence,” Cromar said. “Plus, I just don’t have the resources to fight them.” The case marks the second time in recent weeks that a major corporation has taken issue with a small business over possible trademark infringement.
“The second time in recent weeks,” eh? That must be awful.
Sit down, have a croissant. Let’s talk about this. Dough boy, dough boy, dough boy… where have I heard that? Right — over here (right) — those guys. But while there are batches and batches of DOUGHBOY trademark registrations — some dead, but plenty alive — it does seem that Pilsbury is understandably sensitive about the use of the term in association with baked goods, made famous by its lovable mascot, POPPIN’ FRESH® !
Well actually, a bunch of POPPIN’ FRESH registrations seem to have gone stale, but evidently he’s still a doll (Reg. No. 72307131), and ain’t he? Anyway, back to his, uh, generic name — the DOUGHBOY thing.
Well before we even talk about whether a bakery called DOUGH GIRL is likely to be confused with a commercial baked goods company’s DOUGHBOY , did you notice the graphic on top up there? How Pillsbury uses a “TM” instead of a ® symbol all over its site?
That is interesting, isn’t it? Pillsbury does, after all, have a couple of registrations — though not exactly the ones you’d think:
- Reg. No. 2832951 is for “Baking mix for cake,” in International Class 030 — Staple foods, baked goods, just what you’d think
- Reg. No. 2764538 is for “Refrigerated dough.” Same deal.
- Reg. No. 2091501 is for “Clothing, namely, T-shirts [and boxer shorts].” Class 25. Well, sure.
Ok, still, that seems close enough, doesn’t it? If I were Pillsbury I wouldn’t want anyone selling baked good using DOUGHBOY either, and I’ve got some good and famous registrations to help me stop them. So why does the Pillsbury site utilize the TM — a common-law assertion of trademark rights, rather than an indication of federal trademark registration — instead of the “circle R”? The reason seems to be that Pillsbury is being careful, and is well advised by its counsel. See, as the excerpt above readily demonstrates, they’re using the DOUGHBOY™ trademark (which, contrary to what some people think — and don’t bother to confirm — is not used in a way that “always seems to include the Pillsbury name”) far more broadly on the site, and everywhere else in creation, it seems, than the uses described in these registrations.
Well, what would happen if they used the (R) symbol more broadly than their registrations authorize? It wouldn’t be entirely ethical, or truthful, or maybe even legal… but would it be so terrible? Not really, as Mike Atkins explains:
The Circle-R symbol indicates that a mark is federally registered. It’s irksome when parties use it without having met the rigors needed for its lawful use. It’s even more irksome that the Lanham Act doesn’t penalize owners for displaying the symbol when they haven’t earned it. Imagine the PTO’s reaction when it got the drawing of this applied-for trademark design— sporting the Circle-R — falsely signaling it already has a federal registration. The PTO’s response? A mild office action directing that “Applicant must submit a new drawing with the ‘®’ deleted because it is not part of the mark.” What else could the PTO do? Ignorance is probably responsible for most misuse, but fraud is at the heart of some of it. I only wish the Lanham Act punished knowing misuse.
Well, they do some things right at Pillsbury. Read More…