The owner of a new chain of frozen yogurt stores called Sprinkles Yogurt is headed for turbulent legal waters. The Mealey family has opened their frozen yogurt store in New Jersey with plans to expand into the Philadelphia area.
The widely known Sprinkles cupcake store located in Beverly Hills, CA has objected to use of the name Sprinkles Yogurt.
The cupcake store, owned by Sprinkles Cupcakes Inc, has 16 registered trade marks and 6 pending trade marks with the USPTO. Among the trade marks include SPRINKLES, SPRINKLES CUPCAKES and ISPRINKLES.
Ryan Mealey of Sprinkles Yogurt has filed a trademark application for “Sprinkles Yogurt” in class 30 for frozen yogurt.
The application has been filed on an “intent to use” basis which means the applicant is not yet using the mark in commerce, or is not yet ready to produce evidence of use of the mark in commerce.
The application has not been examined yet, but it is almost certain that when it is, the examining attorney assigned to the application will refuse registration under Trademark Act Section 2(d), 15 U.S.C. ÃÂ§1052(d), because the mark will so resemble the previously registered SPRINKLES trade marks as to be likely to cause confusion, to cause mistake, or to deceive.
Sprinkles Cupcakes Inc has a pending application filed in June 2009 in class 30 for ice cream and frozen yogurt. The also have acquired trade marks for “Sprinkles PALM BEACH” (logo) registered in class 35 for retail store services featuring ice cream and “SPRINKLES OF PALM BEACH” (word only) registered in class 30 for ice cream. Most of Sprinkles Cupcakes Inc’s other trade marks are for bakery goods and cupcakes. They have stated, however, that they do have intentions to enter the ice cream market in the near future.
The owners of Sprinkles Yogurt plan to argue that the word “sprinkles” is generic and should never have been trade marked.