An ® in error, or a CRONUT mark update

A recent New York Times article on competing doughnut shops in Brooklyn began:

Once Dominique Ansel secured a trademark for the Cronut this year, some New Yorkers might have thought that the city’s doughnut wars, or at least heated conversations about doughnuts, were over.

This sentence should begin as “Once Dominique Ansel secured a registration for the CRONUT trademark this year”. However, even that would still be incorrect.

CRONUT is not a registered trademark. The USPTO had, briefly, issued a registration to the CRONUT mark to chef Dominique Ansel and International Pastry Concepts LLC as Reg. No. 4,465,439 on January 14, 2014. About February 21, 2014, the USPTO cancelled the registration as “inadvertently issued” due to an extension of time to oppose. That opposition by chef Najat Kaanache and Crystalline Management, LLC of registration for Ansel’s CRONUT mark was filed on April 8, 2014 (read opposition here).

Ansel filed an answer and motion to dismiss the opposition on May 18, 2014 (with the line that Ansel “came to the United States with only two suitcases and a dream to open his own bakery”). Opposers filed an opposition to the motion to dismiss on June 2, 2014. The proceedings are now suspended until the motion to dismiss is decided.

One of the issues raised in the opposition is alleged misuse of the registration symbol by Ansel. According to the opposers, Ansel is intentionally using the registration symbol to deceive the public into believing CRONUT is a registered mark. Ansel’s response is that use was “proper as of January 14, 2014” and that Ansel owns registrations for the CRONUT mark in the United Kingdom, Monaco, Hong Kong, Switzerland, and Australia. That’s nice, but neither here or there – definitely not here in the United States. Opposers respond that the registration symbol is still in use on Ansel’s website. Maybe, but definitely on Ansel’s Twitter profile, perhaps intended for Monaco only.

As for consumer deception, that seems unnecessary if, like in the New York Times article, sloppy reporting suggests a registration that isn’t.