The Pillsbury Doughboy rises to take on My Dough Girl

There is nothing this Kat loves more than bakery related IP stories, especially cupcake litigation (see post here). So this story especially caught her eye via a TechDirt tweet. But before delving into the IP fight, some background is necessary for non-US readers.

The Pillsbury Doughboy is an American advertising icon and mascot for the Pillsbury Company (owned by General Mills) who sells a variety of chilled dough that can be popped in the oven to reveal croissants, cinnamon rolls, buns and cookies. He is, as the name suggests, a "boy" made out of dough. (Picture, left - The Pillsbury Doughboy) His television commercial appearances normally end with a human finger poking his stomach and him responding with a giggle or his trade marked "hoo hoo" (click here to listen). Like Aunt Jemima and the Green Giant before him, the Pillsbury Doughboy enjoys a significant reputation in the US.

So when over eighteen months ago a Salt Lake City resident opened a cookie store called "My Dough Girl" it was only a matter of time until the Pillsbury Dough Boy came a knockin'. My Dough Girl specializes in gourmet cookies named after a specific "Dough Girl" with names such as Penelope, Vivianna and Margo. Like the Pillsbury Doughboy brand, she also sells frozen dough to customers for home baking. When the owner, Tami Cromar, picked the name of her bakery she told NBC affiliate, KSL in Salt Lake City that she went through the proper procedures, namely checking for any potential copyright infringement.

This is supposedly where she went wrong because as many will know this is a trade mark issue, not a copyright issue. The Doughboy then came after her for trade mark infringement when Pillsbury sent her a cease and desist letter this past May demanding she change the name of her business or face a lawsuit. The Pillsbury Company also filed oppositions to The Dough Girl's trade mark applications pending before the USPTO. It is reported that My Dough Girl will be changing their name at a cost of around $50,000 rather than face the costs of litigation.

The fans are not impressed, however, with the organization merely threatening a small business with the prospect of court. A Facebook page devoted to boycotting Pillsbury following its threat to My Dough Girl has drummed up over 800 members in support of Ms.Cromar. A post by Facebook user Cheryl Hawkes Skelton stated:

"Corporations think consumers have no brain power. There is NO way one could possibly confuse the blue and white dough boy with the red sign of My Dough Girl. I haven't purchased Pillsbury in the past, this clinches the deal that I won't in the future."

Another more terse post from user Christopher C. DeSantis stated that:

"Pillsbury's attorneys are far too hungry for billable hours; they should eat some of their own pastries instead. Legal shenanegans (sic) of this nature are frustrating beyond belief, and serve only to underscore the abuses of the legal profession and the greed of mega-corporations. For shame, Pillsbury! What planet are you from? No Pillsbury products for me until you withdraw this ridiculous lawsuit."

This Kat must again reiterate, that as far as she is aware, Pillsbury have only sent a cease and desist letter and have not actually issued proceedings.

Legally speaking, this Kat is skeptical how strong Pillsbury's case really is. The marks and goods are indeed similar when comparing Pillsbury mark as registered, i.e. DOUGHBOY. However, there is something to be said to how the Pillsbury Doughboy is actually refereed to and identified by consumers. This Kat grew up with the Pillsbury Doughboy's reputation, but the link, if any, between the two marks as used is small. This is because in common American nomenclature, the Doughboy is only ever referred to with the "Pillsbury" precursor.

Evidence of actual confusion would be difficult to come by, as well. My Dough Girl operates out of a stand-alone shop, and not, like Pillsbury's products, in every national supermarket through out the US. (Picture, left - is that a litigation ax he is wielding, or just a spatula - you decide) The marketing channels used by the two are extremely different as well. My Dough Girl's marketing seems, as far as can be ascertained, to rely primarily on social networking through its website, Twitter, Facebook page and word of mouth. The Pillsbury Doughboy enjoys multi-network national television campaigns. Further it seems impossible to envisage a scenario where a consumer gets in their car to drive to the grocery store to pick up a can of Pillsbury croissants, drives past My Dough Girl in Salt Lake City, gets confused, stops and purchases their products instead. Economically speaking, as well, if you are in the market for a Pillsbury Doughboy product it is highly unlikely you will be stopping at a gourmet cookie shop instead.

But what about dillution, an astute IPKat reader asks? This Kat believes that the blurring argument is again weaker given the smaller degree of similarity between the marks and the different consumers of the product (thus, decreasing the two's cross-association). And unless Pillsbury would be arguing that the pin-up names of the cookies tarnishes the innocent nature of the Pillsbury Doughboy, she is again unsure how far a dilution argument takes them. For recent dilution case involving Starbucks see this AmeriKat post here.

This Kat believes that this type of threatening conduct by large corporations can actually be more damaging to the reputation of their overall brand than the harm a small business name would actually cause to their trade marks. This Kat suggests that before big businesses blindly send out cease and desist letters they consider the benefit in doing so, not only for their intellectual property protection, but also their brand's reputation.

The warning shot

The current issue of the UK Intellectual Property Office's Insight newsletter carries a feature entitled "The Warning Shot". This turns out to be a piece by Eversheds technology partner Simon Crossley on how to write warning letter to a would-be infringer. Simon writes, in relevant part:

"... Most of the time, an infringer will cave in once you have sent them a letter. For between £1,000 and £2,000, you are providing them with an easy way out of the mess into which they have got themselves. You might even ask them to pay your legal fees. [the IPKat notes that this is frequently demanded of even incidental infringers, for example those who find themselves in the middle of a supply chain -- who are asked to give undertakings not to infringe again, when they are scarcely in a position to verify whether goods are genuine or not, and who are only too happy not to infringe but don't see why they should have to pay the other side's costs when they willingly comply with all their other requests and the first they heard about the infringement was when they got the other side's solicitor's letter].

So what is the formula for putting together a letter that warns any trespassers off your rights? To emerge as the winner in any pre-trial correspondence, use these basic rules: watch your market; collect the evidence; write a careful letter; and then extract a promise from them to stop [these are necessary conditions for emerging as a winner, but not sufficient ones. You also need an addressee who is sensible, cooperative and risk-averse -- and in the case of the UK a postal system that is capable of getting your letter to the addressee].

Watch the market

You might as well forget about your IP, if you ignore what everyone else is doing in your market and let the unscrupulous trample on your rights. In the same way as you watch your competitors’ marketing strategy and product development, you should think about whether anyone is misusing your rights, swiping your inventions or lifting your software.

If they are sticking your brand on a product, that is easy to point out. In a complex piece of technology, it can be harder to prove that your IP is being abused. But without proof, you are not going to get any sort of remedy [good point: assertions of bad faith, angry criticisms of another's business practices and working on a good hunch are no substitutes for some sort of real evidence].

Go steady with the allegation

Once you have a case and evidence to prove it, then you might think all you have to do is write the infringer a letter, setting out your allegation. The difficulty is that in England, like most jurisdictions, there are laws to say that you cannot make unjustified threats against third parties. [this is a snare for lawyers as well as their clients, since they may be liable for threats made on their clients' behalf. Also, while many jurisdictions have laws against unjustified threats, they don't all have them in their IP laws -- they be lurking elsewhere in civil or procedural codes].

... So when drafting a letter, take care in alleging any infringement, otherwise you can easily fall foul of the law yourself.

Cease and desist

Once you have checked the status of your opponent, you can usually write your letter. In a page or two of plain English, say: here are my rights, here is what you are doing and here is why you are infringing, so stop it or I will take action against you in the courts. Alternatively, ask the infringer to sign an undertaking to prove that they will never use your rights again.

"Cease and desist" [Merpel says, this seems a bit repetitious to me. Can you desist without ceasing?], a request to halt an activity or face legal action, is normally your goal. You might also ask for any stocks of the offending products to be destroyed or sent to you. Sometimes, you might ask for damages, although you are unlikely to get too far - typically, a court decides any award.

If you are warning off traders, then your lawyer will probably produce a standard format document for you to fill in. In more complicated cases, you will collect the evidence, and let your lawyer put a framework round it.

The response

Once your opponents see that you have collected the evidence and are taking advice, they will normally back down, although you may have to negotiate the terms.

Or they might reply by saying you are claiming rights that are far too broad and they are not doing anything wrong. That’s when you get into a fight and court proceedings begin.

The response to sending a letter depends on the identity of the infringer. In the UK and Europe, these types of letters are taken seriously. In the USA, they are less afraid. Any response might be felt to weaken their case. They will wait to see if you sue. Then they know you are serious. Such an approach is more usual in electronics and software. In life sciences, letters are taken more seriously. [US correspondence also seems to be driven by a paranioa about discovery in subsequent proceedings, and many Americans are ultra-cautious about not writing anything that they wouldn't want seen in court]

Letters remain a voluntary course of action - they do not force the other party to do anything. However, courts prefer you try to settle before going to trial. So, in any action that you take against an infringer, a letter is almost always the opening ploy".

The IPKat thinks that initiatives like this are a brilliant idea. The UK IPO is not only providing official information for users of the IP system but is fulfilling a didactic role, raising the awareness of IP owners as to how the dynamics of the system operate once IP rights are used/abused in the market place. Merpel says, I'm waiting for the next issue, which is sure to carry advice on "How to respond to a warning letter".