The popular TV show Cake Boss starring ‘Buddy’ Valastro might be titled something more like ‘Baking Boss’ or ‘Buddy the Cake Champion’ or maybe even ‘Carlo’s Bake Shop’ when the show releases its fourth season (unlikely at this point) or anytime the show is referenced after the third season is done with its first-run.
On July 16th the Western District Judge Richard Jones issued a preliminary injunction against Discovery Communications, Inc. (Discovery) for their use of ‘Cake Boss’ in relation to the TV show on TLC.
The lawsuit is Masters Software, Inc. v. Discovery Communications, Inc., No. 10-405 (W.D. Wash. July 16, 2010) (Jones, J.). The plaintiff in this suit is Masters Software, Inc. (Masters), who also owns the federal registered trademark for CAKEBOSS.
The injunction is set to take effect after Cake Boss airs its third season and after Masters posts a $10,000 bond. Although this suit is still in its early stages, I found it very odd that Judge Jones is requiring plaintiff in the suit, Masters, to post a $10,000 bond before the injunction can take effect when Masters is also the party moving for the preliminary injunction.
Judge Jones issued the injunction using the following language;
“The court orders that, pending trial in this matter, Defendants … shall cease using the name ‘Cake Boss’ to identify the television program currently entitled Cake Boss, and in connection with the sales of merchandise related to that television program.”
“With respect to the sales of related merchandise (except for DVDs of the television program), this injunction shall take effect immediately upon Masters’ posting of bond. Defendants are permitted, however, to sell any pre-existing inventory of such products.”
“With respect to the television program itself, the injunction shall take effect after Masters posts bond and after Defendants complete all scheduled first-run airings of the third season of Cake Boss. Within one month following the final first-run airing of the third season, Defendants may not use the name ‘Cake Boss’ in connection with either repeat showings of any episode of any season of the television program or with any episodes in future seasons.”
Providing reasoning for the injunction against Discovery, Judge Jones noted that there is substantial evidence of actual confusion between the TV show and the software company;
“Confusion between these marks is not limited to casual fans. People in the baking business have assumed that [plaintiff] CakeBoss is related to [defendant] Cake Boss, as evidenced by Masters’ experiences at trade shows. Discovery and Mr. [Bartolo ‘Buddy’] Valastro [star of the show] point out that they receive many more communications than Masters from people who do not appear to be confused, but this is to be expected. Most people are unaware of CakeBoss, including most people who are fans of Cake Boss. Among those that are aware of have encountered both marks, however, there is substantial evidence of actual confusion.”
Also in support of the injunction, Jones highlighted the fact that Discovery’s designation and use of the words ‘Cake Boss’ was not exactly in ‘good-faith’;
“Discovery attempts to paint its intent as innocent, denying that it was aware of CakeBoss when it named Cake Boss. The court accepts that Discovery was unaware of CakeBoss at that time, but this is a far cry from evidence of innocent intent. As noted, it would have only taken a few moments on the internet for Discovery to discover that the name it was considering for its new show (and a multi-million dollar investment) was in use by Masters. If it did not know about CakeBoss, it should have.”
Based on the evidence of actual confusion and Discovery’s inability to provide evidence of its ‘innocent intent’ the court found this sufficient to presume Masters has suffered irreparable harm and to go on to postulate that Masters would also likely prevail on its trademark infringement claim. This was sufficient for Judge Jones to find that Masters was entitled to a preliminary injunction against Discovery for their use of ‘Cake Boss’.
The ‘CAKEBOSS’ / ‘CAKE BOSS’ federal trademarks;
A quick USPTO search reveals that ‘CAKEBOSS’ is registered to Masters Software, Inc., Serial No. 77722225. With the ‘CAKEBOSS’ mark first used in connection with commerce on May 1, 2007. Further, Masters’ ‘CAKEBOSS’ mark is class-identified to;
“Computer software for bakery business management, namely, financial, recipe, order, time, and contact management tools,” and “Providing online instruction in the field of baking cakes via a global computer network.”
Interestingly there is another federal trademark using the words ‘cake boss’ and although this mark appears to have nothing to do with baking, we may see a contest over its use of ‘cake boss’ in the future. Cake Boss, LLC, is the trademark owner for ‘CAKE BOSS’ Serial No. 85065975. Cake Boss, LLC uses the ‘CAKE BOSS’ mark in relation to the class of;
“Distribution of music; distribution of musical sound recordings and video recordings; advertising and promotional services, namely, promoting the interests of musicians, songwriters, singers, musical performers and artists; retail of pre-recorded music and audio visual content, clothing, and general merchandise relating to musicians and musical artists.”
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