Sometimes cupcakes are sweet and tasty treats. Sometimes theyre stuck in the messy middle of a trademark infringement fight.
Lake Oswegos Crave Bake Shop, a winner on the Food Networks Cupcake Wars, has found itself in a legal tussle with a San Francisco bakery of the same name over which company has the rights to use Crave to sell gluten-free baked goods in the Northwest.
The Lake Oswego shop is suing San Franciscos Crave LLC in federal court to block what the local bakery says is a threatened lawsuit on trademark confusion. At the heart of the lawsuit is the question of who really owns the trademark on Crave when it applies to gluten-free baked goods, and whether the Lake Oswego bakery actually infringed on the San Francisco companys trademark.
The Lake Oswego bakerys attorney, Elizabeth Tedesco Milesnick of Miller Nash, is asking a federal judge to declare that the Oregon Crave bakerys trademark does not infringe on the San Francisco shops rights to use the name. She also wants the court to block any future legal action by the San Francisco bakery against the tiny Lake Oswego shop, which plans to stop using the name Crave sometime in the next several months.
Crave LLCs repeated threats have created a reasonable apprehension of litigation and have brought into question the (Lake Oswego) bake shops right to phase out use of its Crave Bake Shop mark on its own timeline and without liability for past damages to Crave LLC, wrote Milesnick in her eight-page complaint filed March 7.
The San Francisco bakery owner could not be reached for comment on the lawsuit. No court date has been set to hear the lawsuit.
Kyra Bussanich, founder of the Lake Oswego bakery, said Monday that her small shop wanted to "resolve the dispute with the San Francisco Crave amicably." She said her bakery "merely wishes to continue to offer breakthrough gluten-free baked products and services; it is unwilling to continue to spend time and money responding to what it considers harassing and unfounded demands."
Phasing out the name
Since 2009, Crave Bake Shop founder Bussanich has been baking gluten-free goodies and selling them from the small storefront on Lake Oswegos Fifth Street.
Bussanich started the bakery after she was diagnosed at age 20 with an autoimmune disorder that meant she could no longer eat some processed foods. The small Lake Oswego shop earned much of its fame when it appeared on the Food Networks Cupcake Wars program in 2010, 2011 and 2012, winning the cooking competition in December 2011 and May 2012. Bussanichs shop also was the runner-up in the June 2012 Cupcake Champions competition.
Bussanichs shop sells gluten-free cupcakes, scones, cinnamon rolls and baked goods with names like Velvet Elvis, Pumpkin Carmel Sin, Hawaii 5-0, Spicy Peach Bellini, Giadas Lemon Basil and Ice Storm. Bussanich also is the author of a new book, "Sweet Cravings," which will be published in September.
In March 2011, Lake Oswegos Crave Bake Shop filed the paperwork to trademark its name with the U.S. Patent and Trademark Office. The trademark was granted in October 2012, months after trademark officials sent a letter to the Lake Oswego shop saying its name and shop sign were not similar to other registered bakeries.
(A search of the Patent and Trademark Office listings for Crave turned up dozens of businesses using some variation of the name, including restaurants, food service companies, a vodka maker, another Crave bakery in Klamath Falls and even a computer software firms smartphone app.)
The legal fireworks began between the Lake Oswego Crave and Crave LLC in San Francisco shortly after Bussanich first appeared on "Cupcake Wars." Attorneys representing Cameo Edwards, who started the San Francisco bakery in January 2003 to sell gluten-free baked goods, sent a letter to the Bussanich in May 2011 demanding that she change the name of her shop to avoid possible confusion.
In the past year, Edwards reached deals with distributors to expand her bakerys sales into Oregon and other parts of the Northwest. When Bussanich asserted her right to use the name in Lake Oswego, the San Francisco bakery threatened legal action. At one point, the San Francisco company demanded that the Lake Oswego bakery pay it for the privilege of using the Crave name.
The legal tug of war subsided in 2012 and for nearly a year there was no correspondence from Edwards or the San Francisco bakery. The demand that Bussanich pay to use the "Crave" name came on Christmas Eve 2012.
Bussanichs attorney wrote in the lawsuit that all the legal problems could be resolved in the next few months because of changes in (Lake Oswego Craves) business, it would be phasing out its use of the Crave Bake Shop mark.
Bussanich said Monday that she was planning changes to her business, which included a new name.
"While Crave Bake Shop is confident that use of its name is legal, it has decided to change its name within the next year," she said. "This was a careful and reasoned business decision based, in part, on the crowded field of 'Crave' trademarks for similar goods and services."
Protecting the brand
At the same time the legal correspondence was flying back and forth between the two bakeries, Edwards small company was in the middle of a similar federal lawsuit against two California food companies and Whole Foods Market Inc. in Austin, Texas. In mid-April 2012, attorneys representing Edwards sued Crave Foods LLC of Los Angeles, Tonys Fine Foods of Sacramento, H.E. Butt Grocery of San Antonio and Whole Foods for trademark infringement.
Edwards claimed the companies had used information they gleaned from her company to break into the gluten-free bakery business on the West Coast. The lawsuit was eventually dismissed in October 2012 when Edwards reached a settlement agreement with the companies.
In a Feb. 28 blog post, Edwards wrote that she had to stop production at her bakery for nearly a year to focus on the legal battle in Texas.
We have been building the Crave brand since 2003 the first gluten-free bakery in San Francisco, Edwards wrote on her blog. While we were somewhat flattered that other people feel that Crave was a great name for a gluten-free business, we knew it was extremely important to protect the name and reputation we built.
Edwards said she would continue to fight to protect her companys brand because strangely enough, weve found other companies have started gluten-free businesses with the word Crave in their name.
As a result, we have had to turn our attention and resources to protecting our brand and will continue to do so.
This year, Edwards opened a social media consulting firm called Migrate Media to help companies expand their brands and their images. The company's name is identical to a digital/social media firm in East Sussex, England.