Trademarks and Rule #1

I went to an undergraduate college that had a very strong sense of community; with only 700 students, nearly everything felt personal.  Over the years our community adopted three unofficial "rules" which were passed down from generation to generation.  Rule #1 (the most important) was "Don't Be a Jerk*".  I've tried to adopt this philosophy into all aspects of my life, including my business.  Every now and then Amaisugiru and I will be debating some sort of business decision and Amai will interject, "Violet!  Don't be a jerk!"  It's a good thing I have her around to keep me grounded 

So why am I bringing this up?  Well, I got an e-mail yesterday from Johnny Manganiotis asking me to update his cupcakery's profile with his new business name, Mr. Cupcakes.  For those of you who haven't been following the Johnny Cupcakes drama, it all began on December 11th when the food blog of New Jersey paper The Bergen Record reported that the cupcake-centric bakery Pane ed Acqua had been sold and was changing its name to Johnny Cupcakes.

Understandably, Johnny Earle, owner of Johnny Cupcakes the apparel company, freaked out when he heard about this.  His concerns that customers might be confused and think that he was opening a cupcakery were not without merit.  What puzzled me, however, was his seeming lack of understanding about the whole trademarking process.  As reported in Cupcakes Take the Cake, Mr. Earle had this to say about the situation:

I've spent a large portion of my life building up my unique name and brand from scratch. Including paying heaps of hard earned money to protect my name and logos. You can't just go and open up a bakery named Ralph Lauren, Marc Jacobs, Tommy Hilfiger, etc...It's trademark infringement and intellectual property damage.

Uh, yes you can, and no, it's not...

Now, I am not an attorney, but I am a small business owner and I have spent more time than I would've liked filing for trademarks.  There are forty-five International Classes of trademarks; to acquire a trademark in a particular class you must be able to show that you are selling goods in that class using the "mark", or that you plan to sell goods in that class within a year.  At the time of this story, Johnny Earle had filed in three classes (go here and search for "76620291" under serial number): Class 014 - Jewelry, Class 018 - Leather Goods, and Class 025 - Clothing.  Notice that he had NOT filed in Class 043 - Hotels & Restaurants.

So, what does this mean?  Again, I am not an attorney, but to me it seems that:

1. Johnny Manganiotis was not violating Johnny Earle's trademark, as Johnny Earle had not filed in the Hotel & Restaurants class.  Johnny Earle did not seem to understand how the trademarking process works, and overreacted.
2. Johnny Manganiotis, while not breaking any laws, kinda violated Rule #1.  Surely when acquiring his domain name, myjohnnycupcakes.com, he must've noticed that there was another (quite prominent) company with the same name.  Yes, he had every right to have a company with the same name in a different class, but it probably wasn't the best (or nicest) business decision.  [Editor's Note: Johnny Manganiotis informs me that he did not know about the Boston-based Johnny Cupcakes until two weeks after he opened his cupcakery.]
   
3. Johnny Earle also kinda violated Rule #1 by speaking without his facts straight and then siccing his lawyers on Johnny Manganiotis.  Johnny Cupcakes has built this image of being an indy label, one that is founded on a large, cult-like grassroots following and is often taken advantage of by "The Man" (e.g. Urban Outfitters ripping off their designs.)  However, when you charge $75 for a hoodie and sic your lawyers on some poor, small bakery owner, you're not indy.  I hate to break it to you Johnny Earle, but you've become "The Man".

I also find it interesting that on December 20th, nine days after this story broke, Johnny Earle filed for a trademark in Class 30 - Staple Foods.  (Go here and search for "77356766" under serial number.)  This still isn't the Restaurants class, and I'd hardly count cupcakes as a staple food, though I guess they could fall under "flour and preparations made from cereals, bread, pastry and confectionery".  (What does that even mean?!?)  Anyway, I'm not an attorney, but it seems to me Johnny Manganiotis could still make a case for Class 43.  Unfortunately, it seems that based on his lawyer's advice, he's changing his name.

So what have we learned from this cupcake drama?  Before you name your bakery, do a simple trademark search!  Don't pick a name that someone else has already trademarked in the appropriate class (30? 43?), and when you do settle on a name, trademark it!!!!  Remember, you have a full year to prove that you are selling goods in that class with that mark, so you can file for the trademark up to a year before you make your first sale.  (As a sidenote, if Johnny Cupcakes isn't selling cupcakes in their stores or on their website by December 20th, 2008, I'm going to be seriously pissed.)

*Technically the rule is "Don't Be an A--hole", but I'm trying to be polite