On 30 September a New York pastry phenomenon landed in London. Baker Dominique Ansel has gained widespread fame amongst pastry aficionados for his croissant-doughnut hybrid, aptly named the Cronut. Fans of the deep-fried sweet treat have been known to queue for 4 hours to get their hands (and mouths) round one of these sugary delights.
The Cronut not only tantalizes the taste buds of those with an especially sweet tooth, but also those with an interest in intellectual property matters as a -result of the somewhat tumultuous path it has taken for the mark “CRONUT” to be registered at the United States Patent and Trademark Office (USPTO).
The USPTO originally registered the mark CRONUT back in January 2014, with the owner being International Pastry Concepts LLC (owned by Dominique Ansel). However, in February 2014 the USPTO issued a notice that the registration was “inadvertently issued” and the application was subject to an unexpired extension of time to oppose the application. The USPTO therefore cancelled the original registration and reinstated the application.
An opposition shortly followed, in April 2014, by Najat Kaanache, a chef. The grounds for opposition were as follows:
- Likelihood of confusion with Kaanache’s pending application in respect of the mark CRONUTS (note, plural) for which the goods listed were similar to those under Ansel’s application;
- Mere descriptiveness of CRONUT;
- Lack of bona fide use in interstate commerce for all of the goods listed in the application;
- Misuse of registration symbol; and
- Fraud on the USPTO that the CRONUT mark was not in use with all the goods on the application.
By way of explanation, Ansel’s application was stated to cover “bakery goods, namely, croissant and doughnut hybrid”, whilst Kaanashe’s application covered “baked goods, namely, sweet donuts and savoury donuts”.
The USPTO’s Trademark Trial and Appeal Board denied the large majority of the opposition, and by the end of June 2015 Kaanache withdrew her opposition. Finally, in August 2015 the CRONUT mark was once again registered.
Despite the Cronut only recently making its way to London, the mark was registered in the UK in 2014 under the International Registration system on the basis that Ansel could claim priority dating back to the filing date of his US application in 2013.
For any bakers out there who believe they have mastered the croissant-doughnut recipe, be sure to choose its name carefully. The owners of the “Croi-nut”, the “Crauxnut”, the “Kronut, and the “Croughnut” have all been on the receiving end of a cease and desist letter sent by Ansel’s lawyers.