More on Trademarks

I've been posting about trademarks a lot recently, and I got an e-mail a couple of days ago from Craig Snyder, a trademark attorney in New York.  Craig explained that my understanding of the importance of Classes wasn't quite complete.  (Unsurprising given that I'm not a lawyer and don't really know what I'm talking about. )  Here's what he had to say:

Courts and the Patent and Trademark Office (PTO) do not really focus so much on Classes of registration. The test they both use is whether there is a "likelihood of confusion" among consumers.  They look first at the appearance, sounds and meanings of the marks.  They then consider the respective goods or services.  This can include many factors such channels of distribution, sophistication of consumers, whether the goods are complementary, etc.  The Class of registration is not specifically considered...

Given this standard, Johnny Cupcakes (the apparel company) clearly has a strong case against Johnny Cupcakes (the cupcakery), as it's very likely that customers would be confused and think that the clothing company had opened up a bakery.  So, I just wanted to apologize for giving out bad information and saying that Johnny Manganiotis had a case for Class 43 (Hotels & Restaurants).  Again, I'm not an attorney, and my posts on legal matters do not constitute legal advice and should not be taken as such.

Given that there are currently nine stores in our database with "babycakes" in the name, I was curious to see if anyone had registered a "babycakes" mark.  There are currently eight "live" trademarks that include the word "babycakes".  (Go here and search for "babycakes".)  Four are not in food-related classes.  "Babycakes Baking Company" is registered in Class 43 (hotels & restaurants) by Babycakes Baking Company LLC in Seal Beach, CA, which I'm assuming is the cupcakery of the same name.  "Babycakes" is registered in Class 29 (meats & processed foods) by McCain Foods USA, Inc. in Oakbrook, IL.  "Babycakes Dessert * Drink * Dine" is registered in Class 43 (hotels & restaurants) by StavRio, Inc. in Carlsbad, CA.  I wasn't able to Google anything useful on these guys, but they filed for the mark on January 28th so it's possible they haven't made any public announcements yet.  And last, but not least, "Babycakes" is registered in Class 30 (staple foods) by Lone Star Consolidated Foods, Inc. in Dallas, TX.  Now, there is a special-order cupcakery by that name in Austin, but I don't think it's the same people considering that Babycakes in Austin opened on February 14, 2006 and the Babycakes trademark was registered on January 3rd, 1992.  Does this mean that all five cupcakeries called "Babycakes" are infringing on Lone Star's mark?  I don't know, I'm not an attorney, but maybe Craig could shed some light on that.

Another interesting thing I learned from Craig is that if you want to trademark a "mark", it's not just enough to make sure that nobody else has registered for that mark.  On your trademark application, you have to sign a declaration affirming:

"...to the best of his knowledge and belief no other person, firm, corporation, or other entity has the right to use the above-identified mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in con­nection with the goods or services of such other person, to cause confusion, or to cause mistake, or to deceive..."

In other words, you have to swear that to the best of your knowledge, nobody else is using that mark in the same type of commerce, even if they have not filed a trademark for it.  Yikes!

What's the lesson here?  If you want to be able to protect your business name, you must pick a unique name and you should file a trademark for it.  Google Search is your friend!

Also, Craig does a lot of work for startups and small businesses.  If any bakeries out there are interested in his services, you can check out his website.