Aunt Joy's Cakes Is Being Sued By Sees Candy..

Business By Navyempress Updated 2 Oct 2010 , 3:26am by psambar

Navyempress Posted 18 Sep 2010 , 8:30pm
post #1 of 38

I was actually looking at another post on the same website and came across this article:

http://www.iptrademarkattorney.com/2010/07/trademark-attorney-cakes-sees-candy-infringement-lanham-act.html

Looks like Sees Candy is suing a cake shop for using their name on the website. They use the candy in their cakes and because they actually said the name, they are in trouble. I guess I could see them wanting the website to use the trademark symbol or say at the bottom that "Sees Candy is a registered trademark of yadda yadda.." But why would they be mad that a company chose to incorporate their candy in their food instead of a competition brand.. We all buy ingredients like Hershey's, Nestle, etc. but if we actually tell people that we use it, we can be sued? I wonder how many cakers say chocolate covered "oreos" on their websites? Hmm...

37 replies
StephW Posted 18 Sep 2010 , 8:50pm
post #2 of 38

If See's is making chocolate chips and chocolate for others to use in their products, I don't understand how they could win a lawsuit for infringement. Doesn't make sense to me for those types of products as they are made to be used as part of another end product.

jason_kraft Posted 18 Sep 2010 , 8:51pm
post #3 of 38

Under trademark law in the US, if a trademark owner fails to defend the trademark, they risk letting it slip into the public domain (e.g. Kleenex, Xerox). This actually seems like a reasonable suit on the part of See's, if you look at the complaint (linked below) the defendant was actually selling a product called "Sees Chocolate Cake". If they didn't use "Sees" in the name of the product, they probably would have been OK.

http://www.schwimmerlegal.com/2010/07/mix-ins-as-grey-goods-identifying-third-party-ingredients-by-brand-names.html

See's is seeking an immediate halt to the use of their trademark, profits from any infringing products, legal fees, and punitive damages. This case will probably be settled out of court before it gets to trial. Actually it may have already been settled, if you look at the defendant's web site she no longer sells "Sees Chocolate Cake", and the only mention of Sees [sic] is on the home page.

costumeczar Posted 18 Sep 2010 , 9:43pm
post #4 of 38

This is the same reason why they all say "rice cereal treats" on the cake shows instead of "rice krispie treats." I noticed that one of them has started saying rice krispies, so they must have reached some kind of agreement with Kelloggs.

Kitagrl Posted 18 Sep 2010 , 9:55pm
post #5 of 38

Wow...that's interesting.

Seems so borderline though....she was using their chips as an ingredient...BUT I guess technically they were making money off the See's name....more people will buy the cake because of somebody else's trademarked name.

Hm.

still_learning Posted 18 Sep 2010 , 10:52pm
post #6 of 38

Just had a nice chat about this with my DH who is a patent and trademark attorney. In addition to Sees having to protect their trademark, his take is that using the Sees name implies ownership or sponsorship by Sees- meaning that the cake could be seen as an actual product of Sees or that Sees has approved of this product. The standard in trademark cases is 'likelihood of confusion' of the consumer. I can see how a company would want to have strict control over things associated with their name. Let's just speculate - what if the cake wasn't very good. Would you want your name associated with it?

Kitagrl Posted 18 Sep 2010 , 11:44pm
post #7 of 38

On the other hand...."Hershey's chocolate cake" or "Toll House Pie" would be legal, because they have actually put out these recipes for public use...right?

Just theoretically...(I don't use them)

jason_kraft Posted 19 Sep 2010 , 12:57am
post #8 of 38
Quote:
Originally Posted by Kitagrl

On the other hand...."Hershey's chocolate cake" or "Toll House Pie" would be legal, because they have actually put out these recipes for public use...right?



I think Hershey would have an issue if you sold a "Hershey's Chocolate Cake", as the implication would be that the cake itself was a Hershey product or endorsed by Hershey. If it was called "Chocolate Cake made with Hershey's(R) Chocolate Chips" that would probably be OK, but I'm not a lawyer so don't take my word for it.

Kitagrl Posted 19 Sep 2010 , 1:08am
post #9 of 38

Yeah but "Hershey's Chocolate Cake" is actually the name of a recipe on the back of the cocoa powder...so you could not make that recipe and sell it by the name?

(again hypothetically)

jason_kraft Posted 19 Sep 2010 , 1:30am
post #10 of 38
Quote:
Originally Posted by Kitagrl

Yeah but "Hershey's Chocolate Cake" is actually the name of a recipe on the back of the cocoa powder...so you could not make that recipe and sell it by the name?



You certainly could, but just because that's what Hershey calls it on their packaging doesn't mean they won't have a problem with you leveraging their trademark to sell your products. As was posted earlier, likelihood of confusion is the issue.

7yyrt Posted 19 Sep 2010 , 1:54am
post #11 of 38

See's Candy doesn't sell products to put in other products, they sell products directly to the consumer to eat.
I know, I tried to buy some of their jimmies once.

jason_kraft Posted 19 Sep 2010 , 2:01am
post #12 of 38
Quote:
Originally Posted by 7yyrt

See's Candy doesn't sell products to put in other products, they sell products directly to the consumer to eat.
I know, I tried to buy some of their jimmies once.



See's cannot legally stop someone from buying their products and baking them into a cake to sell, as long as the seller does not imply that the resulting end product is endorsed by See's.

7yyrt Posted 19 Sep 2010 , 2:08am
post #13 of 38

Using the name See's Candy in their literature implies endorsement by See's Candy and that is why they were sued.

jason_kraft Posted 19 Sep 2010 , 2:25am
post #14 of 38
Quote:
Originally Posted by 7yyrt

Using the name See's Candy in their literature implies endorsement by See's Candy and that is why they were sued.



What's your source on that?

Just using the name "See's Candies" does not automatically mean that an endorsement is implied. For example, if your description states that the cake includes bits of See's Candies(R) Product X with appropriate trademark disclaimers, See's probably wouldn't have an issue, as no reasonable person would assume that See's specifically endorses your cake just because you use See's products as ingredients. Do you see how this is different from calling your product "See's Chocolate Cake"?

Karen421 Posted 19 Sep 2010 , 2:48am
post #15 of 38

So - someone could buy See's candy, use it in their baked goods, and as long as they don't use the name in the description, they would be ok?

jason_kraft Posted 19 Sep 2010 , 3:12am
post #16 of 38
Quote:
Originally Posted by Karen421

So - someone could buy See's candy, use it in their baked goods, and as long as they don't use the name in the description, they would be ok?



Of course...every baker does this kind of thing every day: we buy flour, sugar, and butter with various brand names and use them to make our products.

You would probably even be OK using the name of the product in the description, again as long as you don't imply that the product is somehow endorsed by See's.

I would still try to avoid mentioning brand names whenever possible though, since even if you would end up winning a potential infringement suit, you would still need to spend time and money to defend yourself.

7yyrt Posted 19 Sep 2010 , 3:19am
post #17 of 38

sigh
I'm just going to quit posting on any thread you do. You seem to think you are a lawyer and like to fight.

jason_kraft Posted 19 Sep 2010 , 4:14am
post #18 of 38
Quote:
Originally Posted by 7yyrt

I'm just going to quit posting on any thread you do. You seem to think you are a lawyer and like to fight.



It's not a fight, it's a discussion...it wouldn't be very interesting if no one had any differing opinions, now would it? icon_wink.gif

I do not think I am a lawyer, but I am interested in the law, especially relating to IP. I'm certainly not an expert, but I have a basic understanding of how trademark law works and I am comfortable reading "legalese".

If you'd like to back up your earlier statements with additional arguments and/or sources, I would be interested in reading your posts and replying, as I do enjoy debating. But I would recommend sending ad hominem attacks to my private mailbox instead of posting them in the thread, as they don't further the discussion.

motherofgrace Posted 19 Sep 2010 , 4:51am
post #19 of 38

yea for example, I use kraft peanut butter in my chocoalte peanut butter cake balls. Just using it is ok, but if I called it "Kraft peanut butter cake balls" that would be wrong...... right?????

Am I understanding this right?

scp1127 Posted 19 Sep 2010 , 5:04am
post #20 of 38

Why not say, "made with..."?

jason_kraft Posted 19 Sep 2010 , 5:04am
post #21 of 38
Quote:
Originally Posted by -Sweetheart-

yea for example, I use kraft peanut butter in my chocoalte peanut butter cake balls. Just using it is ok, but if I called it "Kraft peanut butter cake balls" that would be wrong...... right?????

Am I understanding this right?



That's my understanding. If a reasonable person went into a bakery and saw a product called "Kraft Peanut Butter Cake Balls" (apparently Kraft does make peanut butter, but I've never seen it in the US) on the shelf, they could assume that the bakery was reselling a product that was made by Kraft or it was an "official" Kraft product. That would be a big issue for Kraft.

But if you mention in the product description something like "we use only Kraft peanut butter for our products" or "made with Kraft peanut butter", you should be OK, as long as you don't include the brand in the title of your product or otherwise imply that Kraft has anything to do with your product other than making one of the ingredients.

For example, I've noticed several bakeries mention on their websites that they use only Fondarific fondant for their cake designs, there's nothing wrong with this. However, if you started selling a "Fondarific Chocolate Cake", the makers of Fondarific would probably not be happy for two reasons: first, you are implying that the cake was made by or marketed by Fondarific, and second, your use of their brand genericizes the term. If enough people start using "fondarific" to refer to fondant in general, they could lose their trademark. A safer phrasing for the bakery would be "Chocolate Cake with Fondarific(TM) Fondant", but IMO it's probably better to keep other brand names as far away from your specific product names as possible.

Refer to the graveyard of genericized trademarks below:

http://en.wikipedia.org/wiki/List_of_generic_and_genericized_trademarks

motherofgrace Posted 19 Sep 2010 , 6:29am
post #22 of 38

oh they dont have Kraft Peanut butter in the states?? How interesting!

Karen421 Posted 19 Sep 2010 , 1:29pm
post #23 of 38

OK Jasonkraft - but from what I saw on Aunt Joy's web site all she said was "We use the finest chocolates; Sees candy morsels" and she is being sued.

This is what is confusing. If she is being sued because of that, then we shouldn't say we use Nestle's chocolate chips. Yes? No? (question - not challenge)

jason_kraft Posted 19 Sep 2010 , 2:05pm
post #24 of 38
Quote:
Originally Posted by Karen421

OK Jasonkraft - but from what I saw on Aunt Joy's web site all she said was "We use the finest chocolates; Sees candy morsels" and she is being sued.

This is what is confusing. If she is being sued because of that, then we shouldn't say we use Nestle's chocolate chips. Yes? No? (question - not challenge)



The lawsuit was filed several months ago, and in the text of the complaint (linked above in one of my previous posts) See's specifically mentioned that Aunt Joy's was selling a "Sees Chocolate Cake". I'm pretty sure that Aunt Joy's immediately renamed that product and removed most references to See's from their web site as soon as they were notified of the lawsuit.

Karen421 Posted 19 Sep 2010 , 6:45pm
post #25 of 38

I figured that was it, that would be what I would have done if I were them! Makes you only want to say that you use the finest ingredients available, and not go into any detail! icon_rolleyes.gif

bobwonderbuns Posted 19 Sep 2010 , 7:00pm
post #26 of 38

There are a couple of bakeries in Michigan who got Cease and Desist letters from Morley because they make "Bumpy Cakes." Why? Because Morley evidently owns the name "Bumpy Cake" or something and these bakeries must rename them immediately. One is having a Facebook contest to find the snarkiest name for it! icon_lol.gif

JohnnyCakes1966 Posted 19 Sep 2010 , 7:07pm
post #27 of 38

The maddening thing about this to me is that we're so sue-happy in this country! I mean, honestly, how much money could Aunt Sue's possibly have made from this cake?

Why not send a Cease and Desist letter first, telling the person to change the name of their product? If they don't, THEN sue!

bobwonderbuns Posted 19 Sep 2010 , 7:09pm
post #28 of 38

It's funny, in the letters to these bakeries they did NOT say "stop making bumpy cakes." They just said to stop NAMING them "Bumpy Cakes".

JohnnyCakes1966 Posted 19 Sep 2010 , 7:18pm
post #29 of 38
Quote:
Originally Posted by bobwonderbuns

It's funny, in the letters to these bakeries they did NOT say "stop making bumpy cakes." They just said to stop NAMING them "Bumpy Cakes".




Funny that we both mentioned Cease and Desist letters! I'm glad to see someone actually went that route! And why not??? I mean, if Aunt Sue's is selling enough See's Cakes (or whatever) to make See's take notice, it means Aunt Sue's is BUYING See's candies, too! Why not say, "Dear Aunt Sue's, thank you SO much for supporting our business by using our candies in your cake. Please continue to do so!! But we have to ask that you not include "See's" in the name of your product." Now, wouldn't that make you want to keep supporting See's?

bobwonderbuns Posted 19 Sep 2010 , 7:21pm
post #30 of 38

That is funny! What I find amazing is that Morley is making an issue over "bumpy cake." I always thought Sanders held that name!!! Who knew? Around here we refer to that as a STYLE of cake, not a ripoff of some brand name. No brand name is used in that name!! icon_confused.gif Honestly, people are soooooo petty!!! icon_rolleyes.gif

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