Doughnut stores go to war over name
A Florida-based doughnut bakery is having to defend its name after being handed with a trademark infringement lawsuit.
Illinois-based Mini Donut Factory is suing (pdf) the Mini Doughnut Factory for trademark infringement and unfair competition.
Mini Donut Factory filed its claim on Friday, February 9 at the US District Court for the Northern District of Illinois, Eastern Division.
The plaintiff has been operating since December 2008 under the name Mini Donut Factory and has four stores in Illinois. Over its ten years of existence, it said it has invested hundreds of thousands of dollars in advertising and promoting its name.
In December 2017, it received the registration number 5,354,524 for the trademark ‘Mini Donut Factory’, used in connection with doughnuts.
The claim alleged that the Mini Doughnut Factory, which has been operating since November 2015, intentionally chose to adopt and use this name for its retail store featuring mini doughnuts.
The defendant, Mini Doughnut Factory, operates a website under the domain name minidoughnutfactory.com. However, internet users are redirected to the same site when they search for the plaintiff’s trademark, the claim said..
It was claimed that Patrick Ruddell, who opened the Mini Doughnut Factory with Zezura Ruddell, is an “expert” in the field of internet marketing and buying and selling domain names.
It was alleged that the defendant “intentionally adopted the Mini Doughnut Factory name for the purposes of free-riding on the goodwill of plaintiff’s Mini Donut Factory trademark”.
The defendant also registered the domain name minidonutfactory.com for “unfairly confusing consumers and causing initial interest confusion to consumers searching for Mini Donut Factory”, the suit alleged.
The plaintiff said that the word “donut” is fungible with the word “doughnut” and although they are spelled differently, they are identical in overall sound, meaning and commercial impression.
The defendant has been accused of creating false designation of origin and giving the impression that the plaintiff approves, endorses or is connected to Mini Doughnut Factory. As a result, Mini Doughnut Factory has harmed the defendant’s use of Mini Donut Factory, the claim said.
In December 2017, the plaintiff wrote to the defendant requesting that it change its name to “any name that is NOT confusingly similar to Mini Donut Factory”. This included changing the name on any form of media and advertising and marketing material.
It is alleged that counsel for the parties also engaged in telephone discussions in which the defendant refused to change its name.
Mini Donut Factory is seeking damages and permanent injunctive relief prohibiting the use of the name Mini Doughnut Factory.
The defendant is currently seeking to expand its business outside of the state of Illinois and is soliciting interest in franchising the chain, the suit claimed.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories like this sent straight to your inbox.
Today's top stories
Gluten-free group drops case against Jamie Oliver
Canadian company claims infringement over Bakugan toys
