About a year ago, I reported on the U.S. trademark registration (No.4643246) of a frosting “swirl” design (SWIRL DESIGN) for a cupcake made by the Magnolia Bakery in New York (see a picture of the SWIRL DESIGN (below left) and a photograph of a cupcake with the SWIRL DESIGN (below right).
In addition to the cupcake frosting Swirl Design, Magnolia Bakery also obtained trademark registrations on the Supplemental Register for two cake frosting designs.
Supplemental Register – In the United States, there are two registers for trademarks – the Principal and Supplemental. The Supplemental Register was established in 1946 to allow the domestic registration of marks that are capable of distinguishing goods or services but have not yet reached the level of distinctiveness or acquired distinctiveness required for the Principal Register.
While a registration on the Supplemental Register does not convey the presumptions of validity, ownership or exclusive rights to use the mark that arise with a registration on the Principal Register, it does (i) entitle the owner to use the ® symbol; (ii) gives the owner the right to bring an infringement suit in federal court, along with a claim of unfair competition; (iii) can be cited against a later-filed application for a confusingly similar mark for related goods/services, even on the Principal Register; and (iv) can be the basis of an international application.
In this way, a Supplemental Registration can provide protection for a mark while the trademark owner bolsters its use and advertises the mark in such a way as to attain the level of distinctiveness necessary for registration on the Principal Register.
Cake Frosting Designs:
(1) WAVY, DIAGONAL FROSTING DESIGN (Wavy DESIGN) – U.S. Reg. No. 4519386 issued April 22, 2014: The WAVY DESIGN is described as a 3D configuration of a “a round cake with frosting lying flat on the center of the cake’s top and with frosting on the sides of the cake that has been swept diagonally upward and above the top of the cake creating wavy, diagonal frosting designs on the side of the cake and rounded, wave-like frosting designs along the edge of the cake’s top, which create an overall scalloped-looking edge.” Below left is the drawing of the WAVY DESIGN and to the right is a photograph showing the WAVY DESIGN. The second row photograph shows several cakes with the WAVY DESIGN.
2) LATTICE DESIGN OF CAKE AND FROSTING (Lattice Design) – U.S. Reg. No. 4519385 issued April 22, 2014: The LATTICE DESIGN is described as a 3D configuration of an “icebox cake with its body consisting of alternating layers of cake wafers that are interwoven with cream frosting to form a lattice design and with a top layer comprising a frosting spiral made of grooved frosting swirls that ends with a raised edge in the cake’s center.” Below left is the drawing of the LATTICE DESIGN and to the right a photograph of a cake with a LATTICE DESIGN in black and white. The second row photograph shows a multi-colored cake Lattice Design.
Author: Mary B. Aversano
Aversano IP Law
Email: moc.walpionasrevanull@skramedarT
Disclaimer: The views expressed in this Newsletter are not intended as legal advice or an endorsement of any marks and should only be construed as the author’s observations based on information provided through public records. Links to websites are for informational purposes only. Descriptions of the registrations are not intended as legal advice or to assert that likely results will occur in similar situations.
