I donut know. But this lawsuit should give us the answer.
First off, I like when complaints have a nice succinct Nature of the Action section at the beginning. This one sums up the lawsuit well:
“Family Express seeks a declaration that its use of the name “SQUARE DONUTS” in association with its sale of square-shaped donuts at Family Express convenience stores does not infringe Defendant’s asserted trademark rights in “SQUARE DONUTS.”
There is some background. Square Donuts has been selling donuts of all shapes and sizes, including square-shaped, in central Indiana since 1965.
Family Express, a purveyor of convenience stores throughout northern Indiana, started selling square-shaped donuts in 2005, calling them, simply enough, “Square Donuts.”
The parties have been arguing since 2006 when Square Donuts first sent a cease and desist demand to Family Express over the use of the “Square Donuts” trademark. Since that time, Family Express has maintained that “SQUARE DONUTS” was merely descriptive of square-shaped donuts and, therefore, Square Donuts did not and could not assert exclusive rights to use the name “SQUARE DONUTS.”
Apparently 10 years of arguing was the limit for Family Express (and they really don’t want to give their donuts another name, like “Square Doughnuts”), thus leading to this action seeking a declaratory judgment of non-infringement and cancellation of Square Donuts’ federal and state trademark registrations.
Both parties will want a final resolution so this litigation could go the distance. Stay tuned for updates.
Family Express Corporation v. Square Donuts Inc.
Court Case Number: 2:16-cv-00103-TLS-JEM
File Date: Wednesday, March 23, 2016
Plaintiff: Family Express Corporation
Plaintiff Counsel: P. Stephen Fardy, Jonna McGinley Reilly of Swanson, Martin & Bell, LLP
Defendant: Square Donuts Inc.
Cause: Declaration of Non-Infringement, Cancellation
Court: Northern District of Indiana
Judge: Theresa L. Springmann
Referred To: John E. Martin
Complaint:
Indiana Intellectual Property Blog 