United States: What’s In A Tasty Name: Casey’s Cupcakes™ Intellectual Property Rights Are Too Good To Eat

So almost everyone in Laguna Beach has now heard about the grand opening of Casey's Cupcakes on Ocean Avenue, right? I was fortunate enough to be there, on Valentine's Day when they opened, buying a scrumptious cupcake for my primary, if somewhat reluctant, valentine that day, my twelve –year old son Sean, who is certainly very discerning when it comes to sugar products.

Not only did my valentine's gift strike a sweet chord with Sean, but it was a memorable event, which I will always associate with tasty and extremely attractive cupcakes, good music, bold pink in a quaint, bright setting, and, of course, a yummy view of Casey herself and her many stunning cupcake assistants. But it also set my mind to meandering about the intellectual property (IP) rights of cupcake entrepreneurs like Casey. You know, patents, trademarks, copyrights, false advertising, unfair competition, that sort of thing. And mind you, this was weeks before the well-promoted and televised Cupcake Wars episode on The Food Channel in which Casey, whose cupcakes are not be truffled with, trounced the other cupcake contenders.

What is my basis for examining Casey's cupcakes in more fragrant and edible legal detail? Do I have a well-honed culinary nose or tongue or gourmet palate? Well, maybe, maybe not, but I prefer to go on my experience handling intellectual property legal issues for such food and beverage clients as See's Candies, Vivoli's (gelato), Bon Appetit, The Gourmet Retailer, Margaret Fox's Café Beaujolais, Martinelli's, Coke-Cola, Hansen's, to name a few. And I went through the "Cookie Wars" in a case involving the look and feel of one company's allegedly exclusive line of cookies in such shapes as Christmas trees and hearts. But I don't recall an IP case involving a food product so delicious and mouth-watering as Casey's Cupcakes. And, though I am not their attorney, I have eaten Casey's Cupcakes many times now, as have both Sean and his 8 year-old brother Troy.

Can Casey protect her cupcakes? And how? No matter how one slices it, the answer is succulent and aromatic. But before discussing her rights (and, by the way, with no permission or endorsement of any type from Casey's Cupcakes, these are solely my opinions), I'd like to share with you the legal Westlaw "Head Note" of March 8, 2011 from Thompson Reuters West, also the publisher of my own IP book, Trade Dress Protection."

Based on this recent head note, one new morsel of food news is apparently that prisoners are not entitled to have Casey's Cupcakes" for dessert. In view of all the recent news about several murders in Laguna Beach, I urge all of my readers to suppress any homicidal tendencies if you value your high-end cupcakes. This alone should be a sufficient deterrent to a life of crime, paying the ultimate price, no food that is even appetizing – and I thought that was constitutional right of some kind. As my kids remind me whenever I try to prepare a gourmet meal for them.

First, the name Casey's Cupcakes", is generally protectable under federal and California trademark and trade name law, and related unfair competition law under federal and California statutes. If no one else used something confusingly similar first, and the name meets other trademark requirements, for example, that it is not "merely descriptive." And there are some limits on stopping another person in the cupcake industry whose name is also Casey from using a similar name, though it has been, such as with the Gallo name for cheese. But it should not be as mundane as something like "Bob's Burgers." Trademark protection might extend to some of the names used by Casey for her individual cupcakes, though probably not if they are in use by various third parties, such as Red Velvet, or have become generic for a particular flavor or composition or taste. Names like "Chocolate Fudge" have been litigated, with varying success.

Second, the actual recipes for Casey's individual cupcakes may be protected, particularly a collection of them, but that will not necessarily stop someone who has access to them from making them using the recipe. However, that person cannot copy the text of the recipe. In addition, though not particularly common or easy, many food recipes have been protected under the United States patent laws, which is much stronger protection if available. If it would be hard for someone to "reverse engineer" the taste and ingredients for her cupcakes, Casey might keep the recipe protected indefinitely as a "trade secret," like the formula for Coke-Cola® has been for a long time, although recently it may have lost that status due to a disclosure of the full formula on the Internet albeit not by its manufacturer.

Third, the "look and feel" of Casey's distinctive cupcakes, that is, t heir "product design" or "packaging" may be protected, in certain instances, under "trade dress" law. The same is true for her unusual and distinctive looking store, as combinations of distinctive features for retail stores, restaurants, bars, and other businesses, have been protected when they meet the relevant standards. Not all do, but many have. Trade dress may be very potent protection for Casey, including such features as her color combinations. Trade dress may be registered in the United States Patent and Trademark Office as a special type of trademark.

Last, but not least, if Casey's competitors do such smelly and unflavorful things as copy her web site, marketing brochures, photographs of her cupcakes, or falsely compare her exquisite cupcakes to their own trite or stale products, she may be protected by copyright, unfair competition, and false advertising laws. And we won't even discuss now what happens if some Philistine doesn't like Casey's cupcakes and starts a "CaseysCupcakesSucks.com" or "CaseysCupcakesGoingDown.com" or similar pejorative web site, because her cupcakes are simply too good. Well, time to go get some dessert.

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