SANTA MONICA BLVD — A local doughnut shop is in a sticky situation after a New York bakery threatened to sue over a doughnut-croissant hybrid that’s taken the nation by storm.
The Cook Law Group, on behalf of its client, the New York Dominique Ansel Bakery, sent DK’s Donuts and Bakery a cease and desist letter last week to stop using the name “Kronut,” referring to the pastries it was selling. The Dominique Ansel Bakery, which first introduced the nation to a “cronut,” trademarked the term in May.
The letter, which called DK’s Kronut “undeniably similar,” said the use infringes on the Manhattan bakery’s intellectual property rights and is likely to confuse customers about the actual product.
“We assert that the D.A. Bakery has the exclusive right to use this trademark and that your use of the confusingly similar word ‘Kronut’ infringes on that exclusive right under the law,” the letter states.
Candice S. Cook, the attorney representing D.A. Bakery, said it comes down to the whole “likelihood of confusion” for consumers. She said the bakery recognizes individuals who sell cronuts may not be fluent in trademark law.
“The brand really wants to make an effort for people who are passionate about food in general not only experience us but experience everything,” she said. “There is a danger DK could be great but there is a danger with other affiliations that may not be great.
“That’s a negative not only for the Dominique Ansel brand, but also for consumers.”
She said part of the obligation is to “vigorously defend for every infringement that’s out there.”
“Unfortunately, that encompasses both small and big businesses that may innocently enough be doing them, but that doesn’t eradicate that it’s wrong and wrong under the law,” Cook said. “The goal is to keep innovation happening and they really want to use the cronut for good.”
The letter asked DK’s to respond in a timely manner by the end of July.
In response, Sean Tao, co-owner of DK’s Donuts and Bakery, located on Santa Monica Boulevard, said he was writing a letter stating there was no intention of using the trademark of the word cronut.
“We don’t want to get into any type of trouble,” he said. “We already did some of the changes in the store. We wanted to make it our own signature thing to separate it from everybody else. We gave people more options, they sell one flavor per month, and we wanted to do a spin on it.”
Mayly Tao, co-owner of DK’s, said a recent Zagat story, which is cited in the law firm’s letter, used the term “kronut” to describe DK’s pastries.
“We have used DKronut. We have always used that,” she said. “We can’t really control how (the media) categorize our pastry. It’s out of our control when other media outlets use our pastry as that name Kronut with a k or a c, whatever it may be.”
In response to the letter, she said the bakery would rebrand its pastries as “DK’s Double-Decker-O-Nuts,” because she said the bakery still feels entitled to serve a pastry that is its own unique mix between a doughnut and croissant.
She said DK’s also branched out to create Little O’s, which used to be called DKronutHoles.
Sean Tao said the bakery was still in the process of updating its pastry names.
If the New York bakery has a valid trademark that’s registered, it has a presumption of validity and that gives it exclusive rights to use that term all over the United States, Daniel Klerman, professor of law and history at USC, said.
He said DK’s was a pretty “open and shut case.” Klerman said putting a “D” in front of the word doesn’t matter.
“Once you have a trademark, the variations of spellings don’t matter,” Klerman said. “The trademark is supposed to identify one particular entity which holds the reputation. Does it identify a single reputation-bearing entity? Trademark isn’t fundamentally about protecting creativity, it’s about protecting consumers from false labeling.”
He said there could be a couple of factors that make the situation more complicated like if someone was using the term cronut before D.A. Bakery came up with the term.
“Trademark tries to distinguish between words that identify a particular brand or a particular chain of bakeries all under one corporate umbrella,” Klerman said. “Words which identify brands, that’s what a trademark protects. Doughnuts and croissants are what everyone can use, but Dunkin’ Doughnuts is a brand.”