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Square Donut Fight Ends up in Court

Ask almost anyone what a donut is and they’ll most likely describe it as a round pastry that’s fried and then usually glazed with sugar and sometimes various toppings, such as frosting and/or sprinkles. The definition usually consists of a hole in the center, unless the pastry is filled, but two bakeries have started making square donuts and are now fighting over the name “Square Donuts.”

A bakery in Terre Haute, Indiana (called “Square Donuts”) has been making donuts in a box-like form since the 1960s. When Family Express, a convenience store based out of Valparaiso, Indiana, started making their own square donuts in 2005, the Square Donuts sent a cease and desist letter, saying the name “square donuts” was proprietary.

Family Express responded that they did not think their use of the term “square donuts” constituted infringement. They didn’t hear back from Square Donuts so they continued making their box-like pastries. Family Express markets these oddly-shaped donuts on their website as one of their main offerings, saying they’re made every day before being delivered to all their outlets. They even posted a video that shows how the donuts are made, including a machine that cuts the pastries into squares.

The company talks up its oddly-shaped donuts as a unique attraction, despite the fact it has turned out that the shape of their donuts is not so unique after all. In fact, Family Express was about forty years behind another the Terre Haute-based bakery in making and marketing donuts in a new shape. Far from being the first to think of this, Family Express isn’t even the first in the state to make and advertise square donuts, much less the first in the country.

Neither company brought up the issue again until several years later when both companies filed for a trademark for “Square Donuts”. The Terre Haute bakery received the trademark in 2013. When Family Express later filed for the trademark, they were denied on the grounds the trademark had already been given to the bakery.

Family Express immediately contacted Square Donuts to work out a deal in which they could both use the name, but the bakery refused. Family Express responded by filing a complaint for declaratory judgment in U.S. District Court.  The complaint asks the court to declare the trademark invalid on the grounds that the name “square donut” is too descriptive and generic to qualify for a trademark.

It is possible the reason the two companies left the matter alone for so long was because they were operating in different markets. Family Express operates mostly in the northwest region of Indiana while Square Donuts has locations in Terre Haute, Bloomington, Indianapolis, and Richmond, most of which are south of the territory in which Family Express primarily operates.

But the complaint filed by Family Express notes the markets of the two companies have started to overlap in recent years as Square Donuts as started expanding north at the same time Family Express has spread its operations into more southern regions of the state.Super Lawyers named Illinois business trial attorneys Peter Lubin and Vincent DiTommaso Super Lawyers in the Categories of Class Action, Business Litigation and Consumer Rights Litigation. DiTommaso Lubin Austermuehle’s Illinois business trial lawyers have over a quarter of century of experience in litigating complex class action, copyright, non-compete agreement, trademark and libel suits, consumer rights and many different types of business and commercial litigation disputes including lawsuits between businesses or between shareholders and owners of the same business.  Our Des Plaines and Park Ridge business dispute lawyers handle emergency business law suits involving copyrights, trademarks, injunctions, and TROS, covenant not to compete, franchise, distributor and dealer wrongful termination and trade secret lawsuits and many different kinds of business disputes involving shareholders, partnerships, closely held businesses and employee breaches of fiduciary duty. We also assist businesses and business owners who are victims of fraud. You can contact us by calling (630) 333-0000 or our toll free number (877) 990-4990.  You can also contact us online here.