Is the world going completely bonkers.. Dunkin’ Donuts wants to drop the sugary stuff and re-brand as a coffee house. Have you tasted their coffee!
Above the Law has the TM story
By now, you may have heard that Dunkin’ Donuts® is officially rebranding itself beginning January 2019 and dropping the term “donuts” from its name. Yep, you heard me — the iconic brand is dropping the now iconic term from its name. The reason? The company insists that it is an attempt to modernize the brand and focus first on its coffee rather than donuts. Whether you agree or disagree with the rebranding, there is much to appreciate about the effort from a trademark law perspective.
First of all, there is little doubt that the brand has gained widespread traction over the years, but perhaps a little too much. By that, I mean the genericizing of the term “donuts.” The term “donuts” was in fact added to the Merriam Webster dictionary as a less common spelling of ”doughnut,” arguably as a result of the brand’s popularizing the term (which it adopted in 1950). As I have written previously on the genericizing of trademarks, allowing a mark to become generic destroys its trademark status because it no longer becomes associated with the brand but the product itself. In the present case, there is little question that the term “donuts” has become so accepted that the term itself is generic. In fact, later trademark applications and registrations by the company required the disclaimer of the term “donuts” in certain classes. Further, the company does not seem to have independently policed the term “donut.” Although the company is ostensibly dropping the term so as to “modernize” the brand, this decision also stands to strengthen the brand as a result.
This leads us to some important lessons when it comes to trademark protection, so let’s glaze over them.
Trademarks Are Only As Strong as Their Protected Use. It is axiomatic that trademarks gain such status from their use. Even registered trademarks can lose their registered status if such trademarks are no longer used. That said, if you don’t execute a policing strategy to protect your marks, you risk losing trademark rights. Don’t get me wrong — I can’t tell if the term would have been independently protectable when the company adopted the term in 1950 (and it may not have been). It bears mentioning, however, that its original registration for “DUNKIN’ DONUTS” for “restaurant services” did not require disclaiming the term “donuts” (while later registrations did require such a disclaimer). Further, I am not criticizing the company for not protecting the term (as I do not know whether such a strategy would have been successful anyway). The point I am trying to make here is that any trademark owner must decide how it wants to police its brand at the outset, and be consistent with such enforcement.
Registered Trademark Use Must Correlate to Brand Marketing. I cannot tell you how many times I have witnessed clients (some with valuable brands) fail to use their registered trademarks in the manner with which they registered them — if I said “more times than I can count,” that would be an understatement (seriously). Why does this happen? Because there is a disconnect between the marketing of the products/services under the trademark(s) and how they are registered. Sometimes it is just simple miscommunication; other times it seems more systemic, stemming from “tweaks” to marketing strategy or materials that are not properly coordinated with others (including trademark counsel). Sadly, more times than not this is discovered when registration renewals are due for filing with the USPTO. Thankfully, Dunkin’ Donuts® seems to have had its act together here in this regard as far as I can tell. If a trademark owner is taking the time to register its marks, such owner must ensure that the use reflects the registration.
