Court Protects Cake Frosting as “Trade Dress”

A federal court in Denbra IP Holdings, LLC d/b/a Nothing Bundt Cakes v. Kerri Thornton d.b.a. All About Bundt Cakes granted a cake company’s motion for a preliminary injunction, finding that a rival cake company’s frosting patterns violated the first company’s trade dress rights.

As the court noted,

Nothing Bundt Cakes operates over 300 franchise locations throughout the United States and Canada, which collectively earn over $100 million annually in revenue. Twenty-one of those franchises are located in the Dallas-Fort Worth area with two more scheduled to open.

Since 1998, the company has continuously used in interstate commerce a unique frosting pattern, which "consists of long, narrow strips of tubular ring-shaped frosting that expand radially outward from the center of each Bundt cake[ ] to a point on the outer edge of the cake . . . [and which] are applied around the entire perimeter of the Bundt cake's ring shape."

Nothing claimed that its frosting pattern has become recognizable throughout the country and indicates that any Bundt cake with this unique frosting pattern originated solely from Nothing Bundt Cakes.

Nothing presented to the court a survey of 304 consumers, 83% of which indicated that they associated the frosting pattern with Nothing Bundt Cakes' products.

Nothing registered its frosting pattern with the U.S Patent and Trademark Office (USPTO) in 2008.

The defendant, Kerri Thornton, also sells Bundt cakes and advertises them on Facebook and via a website.

As the court noted,

In mid-August 2020, Nothing Bundt Cakes' franchisees began complaining to the company that Thornton had been selling and advertising Bundt cakes with a similar frosting pattern in the Dallas-Fort Worth area under the name "Anything Bundt Cakes."

Nothing’s lawyer then sent Thornton a cease-and-deist letter, alleging that

(1) her use of the word mark ANYTHING BUNDT CAKES was likely to cause confusion with the word mark NOTHING BUNDT CAKES, and

(2) her tubular frosting pattern was likely to cause confusion with Nothing Bundt Cakes' trademarked frosting pattern.

In response, Thornton changed her business name to "All About Bundt Cakes" -- but she continued to use the same frosting pattern.

She still continued to use the same frosting pattern after Nothing’s lawyer sent her a second cease-and-desist letter.

Nothing then sought an injunction.

As the court noted,

The Lanham Act provides that a trademark may be "any word, name, symbol, or device, or any combination thereof" that is used or intended to be used "to identify and distinguish" a person's goods "from those manufactured or sold by others and to indicate the source of the goods…

To be protected a mark must be “distinctive” in one of two ways:

First, a mark is inherently distinctive if its intrinsic nature serves to identify a particular source. . . . Second, a mark has acquired distinctiveness, even if it is not inherently distinctive, if it has developed secondary meaning, which occurs when, in the minds of the public, the primary significance of the mark is to identify the source of the product rather than the product itself.

As the court noted,

A mark develops secondary meaning "when, in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself."

The court concluded that Nothing’s frosting pattern had acquired secondary meaning and thus granted the injunction against the defendant’s use of a similar pattern on her products.