Pillsbury Doughboy vs. My Dough Girl: Is it trademark infrigement?

Hello Everyone:

Have you heard about Pillsbury Doughboy vs. My Dough Girl. Pillsbury sent a cease and desist letter to Tami Cromar owner of My Dough Girl cookie bakery asserting her "My Dough Girl" trademark was too similar to the trademarked "Doughboy." Apparently, Ms. Cromar applied for registration of the mark with the USPTO and Pillsbury immediately sent her a cease and desist. As I have discussed previously, trademark infringement occurs if 1) a trademark owner can assert priority to use the mark (1st to use the mark in commerce) and 2) there is a likliehood of confusion between the priority mark and the subsequent mark. Pillsbury stated "the application was for categories in which we operate, including cookies and refrigerated dough products nationally. We needed to protect our trademarks — and we did." Ms. Cromar sells fresh baked cookies and refrigerated dough cookies.

Are the marks too similar?

Well that is debatable. There are many factors that are assessed to determined if two marks are likely to cause confusion in the marketplace because they are too similar. One is are the marks similar in sight, sound, and meaning. One could argue that because "Doughboy" and "My Dough Girl" have the same meaning as both companies are in the cookie and refrigerated cookie dough business. Also, one could argue "Dough Girl" is too similar in sight and sound to "Doughboy." However, I could also argue the three words "My Dough Girl" together are unique enough not to infringe "Doughboy" and they are not similar in sight and sound. But I believe because the classifications and products are the same, Pillsbury did not want to take any chances.

Similar Doughboy registered trademarks

Ms.Cromar stated she did not understand why Pilsbury was picking on her as there are several companies with the "Doughboy" trademark. I did review registered "Doughboy" trademarks with the USPTO and either they were established well before Pillsbury's "Doughboy" trademark or the marks are in unrelated categories. Two similar trademarks can co-exist if the product or services are unrelated and are categorized in entirely different classifications. The only instance a company can prevent registration of a similar trademark in an unrelated classification is when the company has a very famous trademark and they can assert Dilution, i.e., the similar trademark is diluting the famous brand.

What is next for My Dough Girl

Ms. Cromar agreed to select another trademark rather than fight Pillsbury. But all is not lost. The considerable amount of publicity she has received from the media coverage will no doubt boost her sales at her physical bakery and her online business. She does have a Facebook Fan Page of supporters who want her to fight Pillsbury. I did visit her website and her cookies are indeed unique and look very tasty. If this controversy had not surfaced, she would just be a locally known bakery in Utah..Now her business is a nationally known and famous bakery. Not a bad trade off.