Updated at 5:20 p.m.
After national cupcake chain Sprinkles opened its first store in the District of Columbia in 2011, things got a lot less sweet for a local company using the same name, according to a lawsuit filed yesterday in Washington federal court.
Soft Serve Inc., a Potomac, Md.-based ice cream shop and bakery that does business under the name Sprinkles, accused the Los Angeles-based Sprinkles Cupcakes LLC of trademark infringement. Soft Serve said it had been using the name Sprinkles since at least early 2002, before Sprinkles Cupcakes registered variations of its name with the U.S. Patent and Trademark Office.
Given similarities in the products and services offered by both companies, Soft Serve said Sprinkles Cupcakes' use of the name "in the Washington D.C. metropolitan area is likely to cause confusion in the marketplace. The resulting confusion will damage Plaintiff and injure its reputation in the trade and with the public."
In a statement, Charles Nelson, president of Sprinkles Cupcakes, said Soft Serve had already litigated the same issues before the Trademark Trial and Appeals Board and was "abandoning that losing effort" in filing the latest lawsuit. He said Sprinkles Cupcakes would "defend the new case vigorously."
"There has been no evidence to suggest that Soft Serve has suffered any damages due to confusion—no one has appeared at our Sprinkles Cupcake store in Georgetown, which began serving premium cupcakes in March 2011, thinking that we are somehow related to an ice cream shop in a shopping center in Potomac that also sells cupcakes," Nelson said.
Soft Serve is represented by a team from Wiley Rein. Litigation associate Brendan Morrissey declined to comment on the case.
Sprinkles Cupcakes has previously taken other cupcake stores to court to enforce its trademarks. Soft Serve wants a federal judge in Washington to enter an order stopping Sprinkles Cupcakes from using its name in the Washington metropolitan area. According to the complaint, Sprinkles Cupcakes also plans to sell ice cream in its D.C. store.
Soft Serve said in its complaint that the company had invested "substantial sums" in advertising and promoting its products around the region. The company said the name Sprinkles "is exceptionally valuable to Plaintiff because of the goodwill and consumer recognition associated with it."
The case hasn't been assigned to a judge.