I haven’t followed the whole cupcake fad with any particular interest; I’m more of a frozen yogurt fan.  But it’s no surprise that when a type of product rises in popularity, the rise in competition will lead to intellectual property disputes.  In particular, the spike in cupcake stores throughout the country will inevitably lead to disputes over trademarks.

Candace Nelson, judge in the “Cupcake Wars” TV show has been involved in a trademark dispute over the name of a cupcake store in Fairfield, Connecticut.  The store, formerly known as Pink Sprinkles will now be renamed to “Pink Cupcake Shack” as part of a settlement in a trademark infringement action, claiming that the name would cause confusion with Nelson’s company, “Sprinkles Cupcake.”  Sprinkles Cupcake opened its first store in 2005 and has achieved national recognition, aided perhaps by Nelson’s presence on Cupcake Wars and exposure on shows Oprah and Martha Stewart’s.

This is a good old likelihood-of-confusion issue.  So if it had gone to court, that court would have examined how close the marks were, how well-known the original mark was, the similarity of the markets involved and whether there was evidence of real confusion.  Here, we don’t know whether there was any actual confusion, but it’s clear that both were in the same market and I would assume that the hypothetical average purchaser of cupcakes isn’t particularly discerning.  The original mark seems fairly strong, since it belongs to a well-known cupcake maker with multiple stores who has been featured on national television.  That said, aren’t there only so many appropriate names for a cupcake store?  “Pink Sprinkles” is dangerously close to being merely descriptive, which would mean Nelson would have had to show the words “Pink Sprinkles” were associated with his stores in the minds of the marketplace.

There’s no particular moral to the story, other than demonstrating the way the national trademark system can be clumsy at times.  It seems unlikely that Pink Sprinkles would ever have come into direct competition with Sprinkles Cupcake, and it’s perhaps unreasonable for a company in Connecticut to be aware of a somewhat similarly named store in California.  That said, maybe Sprinkles Cupcake is famous enough in the cupcake world to deserve that protection.

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