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Eat'n Park takes on Texas company over its Smiley Face cookie

Jason Cato
| Monday, Jan. 25, 2010

A federal court could finally decide how the smiling cookie crumbles, as the latest attempt by Homestead-based Eat'n Park to protect its grinning icon pits it against a legally seasoned Texas-based company.

"I'm glad they finally picked on someone who has the resources to carry this forward a bit," said Ryan Gile, who has chronicled a number of smiley-related lawsuits on his blog, Las Vegas Trademark Attorney.

On Dec. 31, Eat'n Park filed a federal lawsuit -- its seventh since 2002 -- against Crumb Corps, claiming the Plano, Texas, company and its Cookies By Design franchises have infringed on its trademark-protected Smiley Face cookie.

All of the previous cases settled, with the defendant either agreeing to stop making cookies with smiley faces or paying Eat'n Park a licensing fee to continue doing so.

Crumb Corps, however, is no stranger to trademark litigation.

Court records show the company or its predecessors have filed at least 12 federal lawsuits since 1994 concerning infringements on its copyrights or trademarks. Defendants have included the owners of a former Forest Hills cookie shop and Florists' Transworld Delivery, better known as FTD.

Besides their smiling cookies, Eat'n Park and Crumb Corps have something else in common: Both have successfully sued Clever Cookie of Plainville, N.Y., over trademark infringements.

A Crumb Corps spokeswoman said the company does not comment on active lawsuits. She never responded to questions about the dozen her company filed and settled in their favor.

The company's founder, however, vowed to "mount a vigorous defense" against Eat'n Park.

"It is difficult to understand how someone can claim ownership of a simple smile," Gwen Willhite said in a statement. Willhite claims to have put smiling faces on cookies since founding the company in 1983.

Cookies By Design, originally called Cookie Bouquet, has at least six federal trademarks, according to court documents. Those include marketing slogans like "Say it with cookies" and registered marks for its business names.

Eat'n Park Hospitality said it has sold Smiley cookies since 1985 and has held a federal trademark for the design since 1987.

Eat'n Park last year baked 12 million Smiley cookies, of which at least 10 million were sold, company spokesman Kevin O'Connell said.

"It's a great product for us. People love it," O'Connell said. "It's a great icon. That's why we protect it. ... We can't keep the trademark if we don't actively protect it."

Trademark law experts are eager to see whether a court will ever rule in the smiley-cookie debate.

"Eat'n Park has a valid trademark, but it knew when it filed that registration that the smiley face was out there in the world," said Michael Madison, a law professor at the University of Pittsburgh who uses these lawsuits as a teaching tool.

Gile, the trademark attorney from Las Vegas, said that could set up an interesting legal debate.

"Their rights were already so diluted when they filed because the smiley face already existed universally," Gile said. "It was Eat'n Park's choice to claim this, in my opinion, very weak symbol as their mark. So they took the risk."

Additional Information:

More smiley trademarks

By most accounts, graphic artist Harvey Ball created the original smiley face in 1963 as part of morale-boosting campaign for a Massachusetts insurance company. He was paid $45 for his work and never applied for a trademark.

Frenchman Franklin Loufrani did.

The former journalist claims he created his Smiley face as a way to distinguish positive stories in France Soir and other newspapers. Loufrani trademarked the symbol in France in October 1971. The newspaper campaign began in 1972.

Loufrani created London-based SmileyWorld, a company that controls more than 2,000 smiley trademarks in 96 countries, including the United States. The company even owns trademarks for food products, including cookies. It just doesn't own the trademark for a smiley cookie in the United States.

'Eat'n Park rights for the cookies pre-exist anyone else's rights in the U.S., and we respect that,' said Loufrani's son, Nicolas, the company's CEO.

SmileyWorld reached a licensing agreement with Eat'n Park several years ago that would allow it to sell smiley cookies in the United States, for an undisclosed fee that would go to Eat'n Park, should it ever decide to do so, Loufrani said.

Additional Information:

Clash of the (cookie) titans

Crumb Corps

• Based: Plano, Texas

• Franchises: About 146 Cookies By Design (originally Cookie Bouquet) locations in 40 states, including one in Mt. Lebanon, according to its Web site

• In the money: $54 million in sales in 2006, the latest year for which figures were available.

Eat'n Park Hospitality Group

• Based: Homestead

• Locations: Operates 76 restaurants in Pennsylvania, Ohio and West Virginia

• In the money: Posted revenues of $345 million in 2008

Source: Crumb Corps and Eat'n Park

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