Written by Susanne Somersalo, Ph.D., Esq., patent attorney at Gearhart Law
A small bakery in New York is selling fried croissant dough in the form of a doughnut and calls the pastry a Cronut™. Cronuts™ have become so popular that people are lining up outside the bakery in the mornings to get their Cronuts™.
The bakery owner, Dominique Ansel realized that he cannot protect the product– he is not the first or only one to fry croissant dough. But in order to get protection for the name Cronut™, he filed a federal trademark. The mark is not yet issued, but once the US Patent and Trademark Office issues the mark others may not use the same name for similar products without having Ansel’s consent.
The concept of a fried croissant has spread out from Manhattan and there are other bakeries that are making similar products. They may not call their pastries Cronuts™ or Ansel can sue them for infringement, but Ansel has to be careful to make sure that the customers are not beginning to call any other fried croissant a Cronut™ because then the name would become generic and would lose the capability of being a trademark.
There are several examples of names that originally were trademarks but then the public began to use them to describe similar products with the trademarked name and the name became generic. Examples of such names are cellophane, escalator, kerosene, dry ice, linoleum, and zipper. The trademark owners in these cases failed to make sure that others did not use their trademark for similar products.
Probably one of the most famous examples of a trademark owner taking measures to prevent their trademark from becoming generic is Xerox®. When the brand name Xerox® was about to become generic the Xerox Corporation launched a media campaign to distinguish their brand name Xerox® from the general term ‘photocopy’ or ‘photocopying’.
Dominique Ansel’s Bakery is not as large an enterprise as Xerox® and it probably does not have any intention to enter an ongoing media campaign to protect the name Cronut™ from becoming generic. However, the least Dominique Ansel should do is to use his trademark consistently with the appropriate trademark insignia (™ or ®). From now on it should always be CRONUT™!