VALPARAISO, Ind. -- Indiana convenience-store retailer Family Express Corp. is squaring off against a Terre Haute, Ind., bakery over square doughnuts.
Family Express has filed a complaint in U.S. District Court for the Northern District of Indiana, Hammond Division, seeking a declaration that its use of the name “Square Donuts” in association with its sale of square-shaped doughnuts at its convenience stores does not infringe on the defendant’s trademark rights.
Valparaiso, Ind.-based Family Express, which has 65 locations, has been operating convenience stores throughout northern Indiana since 1975. It has been selling and advertising square-shaped doughnuts under the name Square Donuts in its c-stores since early 2005, according to court documents.
Square Donuts Inc. has been selling square-shaped doughnuts under the name Square Donuts since 1967. It sells the doughnuts through its bakery stores in Terre Haute, Indianapolis, Bloomington and Richmond, Ind., and through Ricker’s convenience stores in central Indiana, the court documents said.
On Jan. 17, 2006, Square Donuts Inc. issued a cease-and-desist letter to Family Express asserting its trademark rights. The letter claimed that Family Express was in direct violation of its Square Donuts trademark and threatened to sue if Family Express did not stop using the “Square Donuts” name.
Family Express responded to the letter saying that it “believed that no infringement existed.” It said that “Square Donuts” was “merely descriptive” of square-shaped doughnuts; therefore, the baker could not claim exclusive rights to the phrase. The baker did not respond further, so Family Express proceeded to promote, market and sell its Square Donuts throughout northern Indiana.
In May 2013, Square Donuts Inc. obtained a federal trademark for “Square Donuts” in retail bakery shops. In October 2015, Family Express filed for, but did not receive, a trademark for “Square Donuts” in convenience stores.
Family Express said it has attempted, unsuccessfully, to negotiate a coexistence agreement with Square Donuts Inc. Both companies are now expanding their businesses, the court documents said, with the possibility of overlapping markets.
Family Express said its distinctive packaging and design elements eliminate “any possibility of consumer confusion” over the square-shaped doughnuts. Square Donuts Inc. counters that the c-store chain “has failed to establish sufficient secondary meaning” to avoid consumer confusion.
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