Richard Comer started making square donuts nearly 50 years ago. Now, his company has taken on a fellow Indiana baker for allegedly honing in on what it considers a trademarked treat.
Comer, founded Square Donuts Inc. of Terre Haute, Ind., in 1967. The company sent a cease-and-desist letter to Family Express Corp., which started selling square-shaped doughnuts under the name “Square Donuts” in 2005.
Comer’s Square Donuts, which expanded over five decades to nine locations in Indiana, clearly considers itself the innovator of the four-sided doughnut; its website even links to a newspaper article that declares, “Donuts were round—until Richard Comer Sr. made them square.”
In 1975, Gus Olympidis opened the Time Low convenience store in Valparaiso, Ind. That company now operates a chain of 60-some convenience stores and gas stations under the Family Express name.
Soon after Family Express started selling its square donuts, it got the cease-and-desist letter from Square Donuts Inc., which claimed trademark rights in the term “Square Donuts.” So began the bakers’ legal tug-of-war over who gets to officially call their donuts square.
In 2012, Comer’s Square Donuts Inc. registered “Square Donuts Inc.” as a trademark with Office of the Secretary of State of Indiana and then got federal trademark registrations for “Square Donuts” for retail bakery shops as of March 2013 (Registration No. 4341136) and café services (No. 4341135).
Not to be left on the cooling rack, Family Express filed a registration application with the Patent and Trademark Office for “Square Donuts” for retail convenience stores in October 2015 (Serial No. 86779997). However, the PTO rejected the application after finding that it created a likelihood of confusion with the existing registrations.
This prompted Family Express to finally go to court. It filed a complaint March 23 in federal court, asking for a declaration that its use of the name “Square Donuts” is descriptive of its goods and doesn’t infringe any enforceable trademark right held by Square Donuts Inc. It’s also seeking cancellation of Square Donuts Inc.’s federal trademark registrations on the grounds that “square donuts” is a generic term and not distinctive, which is required for a trademark.
Family Express reached out to Square Donuts Inc. before going to court to see if the parties could reach an agreement, according to the complaint. It remains to be seen whether the court will rule on any of the trademark issues in the case. Or whether any of Indiana’s circular doughnut vendors will take advantage of the legal battle to try and lure customers away from their square competitors.
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