By: Amanda Gramlich
Foodies of the world unite! If you are a foodie like myself, you have most likely heard of the Cronut. The Cronut, a mouthwatering hybrid of “croissant” and “doughnut,” is believed be pioneered by Chef Dominique Ansel and his NYC bakery. With lines to his bakery out the door, despite a recent health-inspection scare, Ansel knew he had a legendary product worth protecting. As such, on May 19, 2013, Ansel filed an application with the United States Patent & Trademark Office (“USPTO”) to coin the term “Cronut.” Soon after, two competitors – a Massachusetts bakery, and a Texas bakery called Crystalline Management LLC (“Crystalline”)– applied for their chance to coin the term. Specifically, the Massachusetts bakery applied for “Cronut hole” on June 10, 2013 on an “intent-to-use” basis for retail bakery shops, whereas Crystalline applied for the mark “Cronuts” for similar reasons on June 17, 2013, calling the baked goods a combination of “creative” and “donut.” Both of the latter applications were denied pursuant to Section 2(d) of the Trademark Act because of a likelihood of confusion with Ansel’s earlier application, should it register. Crystalline filed yet another application on July 12, 2013 for the use of the term Cronuts, but this time for “publications featuring recipes;” this application has not yet been denied due to Crystalline’s request for additional information.
The discord in the current litigation before the Trademark Trial and Appeal Board (“TTAB”) arises from a USPTO clerical error that led to the premature issuance of Ansel’s Cronut trademark Certificate of Registration on January 14, 2014. A month later, USPTO rescinded Ansel’s registration stating it was improperly issued given Crystalline’s timely request for an extension. In its formal opposition filed on April 8, 2014, Crystalline claims that (1) registration of Ansel’s trademark will likely cause confusion with their designation under Section 2(d) of the Lanham Act, (2) the proposed trademark is “merely descriptive” under Trademark Act Section 2(e)(1), (3) the nonuse of the trademark at the time of application violates Section 1(a) of the Trademark Act, (4) Ansel’s camp has misused the symbol according to Section 29 of the Lanham Act, and (5) has also committed fraud upon the USPTO.
In assessing Crystalline’s first claim, there are thirteen factors to consider when determining the likelihood of confusion between two trademarks under Section 2(d) of the Lanham Act. These factors are explained in Application of E.I. DuPont DeNemours & Co., where the court held that “confusion was not likely to stem from the concurrent use of ‘RALLY’ by registrant on its household cleaning products and by applicant on its automotive cleaning products” because the parties had agreed to only use the term within their respective markets. However, in addition to the Dupont factors, the USPTO likes to focus on “the marks in their entireties” with emphasis on “visual similarities, sounds, connotations, and commercial impressions” in addition to the “relatedness of the goods and/or services.” Crystalline will likely prevail on Section 2(d) grounds if they can prove that their use of the term “Cronuts” is substantially identical to Ansel’s use of the term with respect to the aforementioned factors.
Ansel’s original registration was denied on the basis that its mark was “merely descriptive” under Section 2(e)(1) of the Lanham Act. The policy reasons behind denying the registration of descriptive words is to prevent a prospective applicant from acquiring a monopoly in goods other than those he made, and to avoid the depleting the available words describing articles of commerce. On this account, the court might find that because Ansel’s proposed mark “merely describes” the subject matter of Crystalline’s recipe publication, Crystalline should be permitted to register their second application for the mark.
Going into further detail on Claim 4, Crystalline asserts that Ansel knew of the February trademark rescission, but continued to use the trademark on his website and even issued a cease-and-desist notice claiming its mark was federally registered. According to cases interpreting Section 29 of the Lanham Act, improperly representing to the public that one’s mark is registered constitutes grounds for denying an otherwise registrable mark. So even if Ansel were to defeat Crystalline’s other claims, if the TTAB finds that he has intentionally misused the Cronut registration symbol, their mark might still be denied on Section 29 grounds.
Finally, in addressing Claims 3 and 5, Crystalline argues that because Ansel did not use the mark when he filed his use-in-commerce application, that USPTO was duped into reasonably relying on “the misrepresentation, and as a result published Ansel’s Cronut application for opposition purposes.” Pursuant to Section 1(a) of the Trademark Act, an applicant is required to have used the mark in interstate commerce prior to filing his trademark application. Crystalline contends that it used the term “Cronut” for selling goods before Ansel had, and therefore it is the rightful owner of the mark.
Who will win the right to claim this trendy pastry as their own? Stay tuned, as it looks like things are quickly heatin
 Jess Collen, Will Trademark Testing Heat Up Over Half-Baked Claims To ‘Cronut’?, Forbes (Apr. 8, 2014, 1:28 PM), https://www.forbes.com/sites/jesscollen/2014/04/08/cronut-wars/ [hereinafter Collen].
 Leonica Valentine & Rebecca Rosenberg, Cronut bakery hit by ‘mouse infestation’, N.Y. Post (Apr. 4, 2014, 5:40 PM), https://nypost.com/2014/04/04/cronut-creators-bakery-closed-for-severe-mouse-infestation/.
 Colleen, supra note 1.
 Nikki Siesel, The Controversy Surrounding The CRONUT Trademark Registration, N.Y. Trademark Att’y L. Blog (Feb. 24, 2014), blog.com/2014/02/24/controversy-surrounding-cronut-trademark-registration/ [hereinafter Siesel].
 Lanham Act, 15 U.S.C. § 1052(d) (2006).
 Siesel, supra note 4.
 Id.; see also Extension of Time Granted, Crystalline Mgmt., LLC v. Int’l Pastry Concepts LLC (No. 85961168), available at
 Siesel, supra note 4.
 Bill Donahue, Brand Battles: The Fight Over ‘Cronuts’ Heats Up, Law 360 (Apr. 11, 2014, 7:34 PM), https://www.law360.com/articles/527472/brand-battles-the-fight-over-cronuts-heats-up.
 Notice of Opp’n at 6-11, Crystalline Mgmt., LLC v. Int’l Pastry Concepts LLC (No. 85961168), available at https://www.scribd.com/doc/217228091/CRONUT-Opposition-91215813-2014-04-08 [hereinafter Notice of Opp’n].
 See § 1052(d); see also Siesel, supra note 4.
 476 F.2d 1357 (1973).
 Id. at 1364.
 Siesel, supra note 4.
 § 1052(e)(1); Notice of Opp’n at 7-8.
 See Armour & Co. v. Organon, Inc., 245 F. 2d 495, 498 (1957); see also Telechron, Inc. v. Telicon Corp., 198 F.2d 903, 906 (1952).
 Notice of Opp’n at 9.
 § 1111.
 Copelands’ Enter., Inc. v. CNV, Inc., 945 F.2d 1563 (1991); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098 (1976).
 Notice of Opp’n at 9-11.
 § 1051(a).
 Notice of Opp’n at 5, 8.