Independent attorneys state opinions on Racine kringle battle

Racine trademark attorney Arthur Hansmann knows a little bit about kringle litigation. He represented a Racine bakery when a former native of Racine, then making kringle in Arizona, tried to trademark the word “kringle.”
Kringle! Kringle!, Inc., of Scottsdale, Ariz., applied for a trademark of its corporate name with the United States Trademark office in 1987. Hansmann opposed the registration on behalf of Racine’s O&H Bakery in 1988. The registration was precluded when Kringle! Kringle!, Inc., abandoned the mark in 1989. The preclusion was upheld by trademark office, which, according to Hansmann, agreed it was just a descriptive term for Danish pastries.
“That was decided in the U.S. Trademark Office, Hansmann said. “The ex-Racine person filed an application to register the word kringle. The proposed registrations are published so those who would be damaged can step forward and oppose this. We did oppose it, with O&H being the client. We called to the attention of the trademark office that the word kringle is descriptive of a particular type of bakery. With the distance between Washington, D.C., and Racine, I didn’t think that the U.S. Trademark office was aware that the name kringle was just primarily descriptive.”
The current conflict over the term “Racine kringle” will be hard for Racine Danish Kringle Corp. to win, according to Hansmann, particularly since the firm has not registered the words as a trademark.
“I was somewhat under the impression they had registered it based on the way they have been asserting registered rights,” Hansmann said. “They are relying not on registered rights, but common law rights which are obtained simply by somewhat extensive and exclusive use of just the words Racine kringle. Those rights normally do not trump the domain name registration. It has to be registered rights.”
Due to what would appear to be a very unusual juxtaposition of words and punctuation, one might think that Kringle! Kringle! is fairly distinctive and easy to protect. However, it was not distinctive enough.
“Even the duplication – using the word twice – did not put the applicant in a position to register that in view of our showing that kringle is a descriptive word for that pastry,” Hansmann said. “The goods that they sought to register that Kringle! Kringle! for was ‘Danish pastries.’ So it is right on.” Hansmann added that other firms have trademarked names including the word Kringle, but in the context of the name Kris Kringle rather than as a descriptive term for pastry.
Some argue that Racine kringle is a descriptive term for the unique style of bakery developed in Racine. The Racine pastries are flatter, flakier and shaped differently than their Danish counterparts. But Hansmann said that saying that Racine kringle is descriptive of that style of pastry would not hold up in a court of law.
“I would not generally agree with that distinction as to the nuances of difference in the bakery itself,” he said. “Normally, in trademark rights we’re dealing with more of a general consideration of the nature of the product, whether it be a high-rise type of bakery or a flat one that is characteristic of Racine’s. The fact is that to anyone in Denmark or Racine, it’s kringle.”
Hansmann agrees with conventional legal and marketing theory that some trademarks are harder to protect than others. Racine Danish Kringle, in particular, will be very hard to protect.
“I think it would be very difficult to defend it,” Hansmann said. “You are using the geographic description Racine, which is not favored in the trademark statute. Danish is like Racine – geographic. Likewise you are using the primarily descriptive word kringle. You have to then show that there is secondary meaning.”
And the common way of showing that the words have taken on a secondary meaning, according to Hansmann, would be to take a survey among prospective buyers.
“They have to go out among customers or the public generally and ask them something to the effect of – ‘if you see this particular packaging with Racine kringle printed on it, who do you understand produced that product?’ Now if a large percentage of those confronted with that question would say ‘That’s a product made by Racine Danish Kringle,’ then that’s establishing this secondary meaning,” Hansmann said. “The primary meaning is a Danish kringle made in Racine, and the secondary meaning would be the association between the product and the supplier of the goods – if they can tie the two together, then there is secondary meaning. They might also show that secondary meaning by extensive advertising. But fundamentally and first, the customer survey is the usual way that is shown – which is a laborious and expensive operation to be sure.”
Swartzburg thinks name hard to protect
Sandy Swartzberg, of the Milwaukee law firm Swartzberg and Duggan is not only experienced in litigation to protect proprietary names – he is a frequent kringle buyer.
The general practice firm concentrates on business and technology issues.
“I would think it would be very hard to protect,” he said of the term Racine Kringle. “That’s too common a name. I belong to the Parkland Kiwanis. For our fund raisers, we always talk about getting some Racine kringles – and then we talk about what bakery to buy them from depending on who’s got the best price.”
The fact that Racine kringle tends to indicate a specific variety of kringle – distinct from its Danish counterpart, may also be an issue, according to Swartzberg.
“I think it’s denoted a certain style of kringle,” Swartzberg said. “I think it’s a tricky slope. Sheboygan bratwurst, for instance, is a specific type of bratwurst. You would have a hard time protecting that.”
While Swartzberg’s clients – and many other businesses – have had to protect their rights to names and proprietary phrases through litigation, many legal actions regarding allegedly protected phrases are spurious, according to Swartzberg.
“We run into these issues with names all the time. We have had to fight for Technology Consulting Corporation – TCC,” he said, referring to their client, one of the larger information systems support organizations in the Midwest. “But I have clients all the time that get cease-and-desist orders for using a name, and most of the time they’re bogus.”
Swartzberg sees two issues with the protection of a term such as Racine kringle. The first is the fact that it is not registered, and therefore a claim of proprietary ownership will have to meet rigorous requirements.
“You can establish a trademark two ways,” Swartzberg said. “You can register it federally, and you can just use it. If you have used it, and can prove that you have used it, you can assert a common-law right. It’s a fact-based question to determine if they have enough equity in the phrase. The fact that you have the phrase on your packaging may not be enough. Courts really want to determine that someone has expended a large amount of time and money. Plus you have the issue of whether the name Racine Kringle is too generic.”
Descriptive, generic words – phrases that have meaning apart from the name of the product – are much harder to protect, he said, even if they are protected by trademark registration.
“That’s why Miller had trouble protecting Miller Lite,” Swartzberg said. “They could protect the spelling of Lite, but could not prevent other brewers from promoting a light beer. The word light is just descriptive of a type of beer.”
Even trademark registration of unique, made-up words is not an ironclad protection for a phrase. According to Swartzberg, in the 1940s Proctor & Gamble came up with as many product names as it could for female sanitary napkin products and registered them as trademarks.
“They wanted to prevent their competitors from having any words they could use,” he said. “The courts said they could not do that. Apart from registration, the names had to be in regular use. Sporadic use was not enough.”
While trademark registration and brand equity can pull otherwise public domain phrases into the realm of private property, improper use as a noun or verb can erode that proprietary meaning, Swartzberg said.
“The other thing that can happen is what transpired with Scotch Tape,” he said. “It can become such a common-use name it was becoming a noun to describe a certain type of tape. The word refrigerator was originally someone’s brand name. Xerox has had no end of trouble. Coca Cola worked hard to solve the problem they had when people down south started to use Coke to mean any type of soft drink. It was being used generically down south. Davenport used to be a furniture company in Iowa – now it’s just a type of couch.”
April 27, 2001 SBT