Bagel v. Bagel, or Why You Can't Really Trademark Food

Back in February, a Brooklyn-based bakery called The Bagel Store became all the rage for their kooky looking rainbow bagels. As predicted, the internet went nutballs for them, but I was kind of turned off. They looked… well they looked like a clown ate a bunch of Play-Doh and took a dump. I didn’t find them particularly appetizing looking. But a lot of people did since the demand for the bagels skyrocketed. “Just another crazy internet fad,” I thought before promptly forgetting about it and moving on.

Then the other day I was reading the local paper and came across this story about a bakery in my home town that got a cease and desist letter from The Bagel Store for making and selling similar bagels. Rich Herzfeld and his son Dave own and operate the popular bakery The Chef’s Table. They periodically offer colored bagels, and when gay marriage was legalized by the Supreme Court last year, they began serving rainbow bagels to celebrate the decision. The bagels became a hot ticket item.

According to the cease and desist, The Chef’s Table was in violation of The Bagel Store’s trademark. Specifically, The Bagel Store took umbrage over the fact that the Herzfelds referred to their creation as "rainbow bagels."

“Chef’s Table, has been using our Trademark or a very similar mark (“Infringing Trademark”) in association with marketing, sale, distribution or identification of its products and/or services, and is thus trading on the name, goodwill and reputation earned by [our] Company. We respectfully request that you immediately discontinue any and all use of the Infringing Trademark in association with the marketing, sale, distribution, or identification of your products or services.”

As it turns out, The Bagel Store has applied for - but as of this writing not yet received - trademark registration for the word mark “Rainbow Bagel.” The father son duo decided not to fight The Bagel Store, opting instead to rename their version “unicorn bagels.” That was probably the easy common-sense thing to do even if it was probably unnecessary.

In order for the U.S. Patent and Trademark Office to register your mark, the mark must be distinctive. The more generic or common it is, the less likely it is to be registered. The USPTO reviews proposed marks on a sliding scale of descriptiveness in order to determine whether the mark should be approved. I've listed them in the chart below. 

It’s tough to say at this juncture whether “Rainbow Bagel” would be considered a descriptive mark or a generic term (it’s clearly not fanciful, arbitrary, or suggestive), but my guess is the latter since to qualify as a descriptive mark it would have to be used to such a great extent in the marketplace that the word combination "Rainbow Bagel" took on a whole new "secondary" meaning (I wrote about this in greater depth a few weeks ago). That secondary meaning has to describe a quality or characteristic of the product and it’s not clear to me that “Rainbow Bagel” can clear that hurdle.

So the name "Rainbow Bagel" is up in the air, but what about the bagels themselves? Can’t the product qualify for trademark protection even if the name can’t? Maybe.

While trademark law protects words, names, designs, logos, and other symbols associated with a product or business, it can also protect products, shapes, packaging, designs, colors, sounds, and more. Food products may fall under that banner if the design of the product is distinctive (There’s that word again. Catching a theme?) or the visual nature of the food product becomes synonymous with the business… in essence becoming a logo. The recipe behind the bagels cannot receive trademark protection, which is why you always hear stories about famous recipes - like Coca-Cola or KFC - that get locked up in deep underground vaults, or how only two people know the recipe and can't be on the same flight together. There's no real statutory mechanism in intellectual property law that protects recipes or formulas. Copyright can only protect the artistic expression behind the writing of a recipe, but not the ingredients or their combination.  And while recipes can receive patent protection, it's a long and expensive process that may ultimately fail if the product can be substantially replicated without the recipe. 

For the rainbow bagels to qualify as trademarks, The Bagel Store would have to demonstrate that they're visually associated with their brand - a bar I don’t think they can clear. So while the owners of The Chef's Table decided not to fight over the rainbow bagels, it's a fight they might be able to win.

Greg Kanaan

The [Legal] Artist, Boston, MA, USA