Stoel Rives attorney Anne Glazer discussed with Jack Ellis of World Trademark Review trademark lessons revealed by the 'cronut' – a cross between a croissant and a doughnut – that has taken the U.S. patisserie world by storm. Invented by New York pastry chef Dominique Ansel, the term cronut is now the subject of several U.S. trademark applications, including Chef Ansel's application for "CRONUT" filed on May 19, 2013.
Glazer suggested that Ansel and his New York bakery should use CRONUT only as a trademark, not as a coined word for a type of pastry. "A trademark is the answer to the question 'who are you?' not 'what are you?'," she said. "The classic advice would be to refer to the product as 'a CRONUT™ pastry'. It's risky for the creator to call it 'a cronut'. Even Burger King regularly refers to the WHOPPER® as a 'sandwich'." Glazer also argued that Ansel should be diligent in enforcing his trademark rights. "He should continue educating the public and the press that CRONUT is a trademark," she said. "As part of that, he probably should continue trying to squelch others who use the term commercially. These things matter because the USPTO examiner may conduct online research to determine whether the term has any generally accepted meaning in the trade."
Glazer cautioned that small and single-location companies should always consider whether the time, effort and expense involved in filing, enforcing and maintaining a national trademark would divert important resources away from the core aspect of the business. "You can't always know beforehand if a product will be big enough to justify the cost of registering a trademark, and it depends on the size of the business," says Glazer. "As long as these treats can only be sold fresh out of the fryer, and they sell out every morning, there may be little to gain from trademark protection. However, if the bakery draws loads of tourists, sells online, or packages or licenses goods for sale at other locations, then a regular trademark application filing program may make sense."
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"Rapid rise of the 'cronut' gives pointers for early-stage trademark strategy" was published by World Trademark Review, July 9, 2013.