Smiley Face Cookie Company, served with cease and desist letter, fights to keep its name and design; KSDK, December 18, 2024

Tracy Hinson (KSDK), Hunter Bassler, Kelsi Anderson, KSDK; Smiley Face Cookie Company, served with cease and desist letter, fights to keep its name and design

"The bakery received a cease and desist letter from Pennsylvania in early 2016, but it was disregarded. A smiley face cookie they started baking in the 70s became the icon for the bakery's adults with disabilities job program in 2021.

"We pretty much kind of ignored that letter and just thought, 'Hey, we have precedence, so we can keep making these cookies,'" Rinaberger said. "We received a second one in 2022, never heard from the trademark owners until recently when we received an email following up from their attorneys asking what our action plans were to stop calling them smiley cookies."

In a statement to 5 On Your Side, Pennsylvania's Eat'nPark management said they own the federally registered trademarks for Smiley as it relates to cookies, and for the iconic Smiley Face design they've been using on cookies since the 1980s.

What the St. Louis company is worried about most is losing the recognition of seeing Smiley Face Cookie Company in local stores.

"One of the areas that we think we have precedence, besides us doing it before they had their trademark, is it's becoming quite generic and there are hundreds of bakeries around the United States making smile cookies and calling them either smiley face cookies or smile cookies," Rinaberger said.

And for those reasons, they aren't going to let Smiley Face Cookie Company crumble. There is a GoFundMe set up to help with the Smiley Face Cookie Company's legal expenses.

An Eat'nPark spokesperson sent the following statement to 5 On Your Side:

"McArthur’s Bakery is doing important and meaningful work, and we respect their mission. For some time, however, we had reached out to McArthur’s Bakery to engage in a conversation about our trademarks. Unfortunately, they ignored our outreach and our efforts to initiate good-faith conversations."

Cincinnati threatens to sue middle school over copyright, Xavier campaigns to replace mascot; On3.com, November 22, 2024

 Nick Schultz, On3.com; Cincinnati threatens to sue middle school over copyright, Xavier campaigns to replace mascot

"“A few months ago, we were alerted to the use of the University of Cincinnati’s trademarks by Cheatham Middle School,” the statement read. “When we or our licensing agency, the Collegiate Licensing Company (CLC), identify infringing activity, the other party is contacted to educate them about the University’s rights and request they stop using the marks. As part of this process, we requested CMS to identify the various ways in which they have adopted UC’s identity so we can understand the full scale of what is involved to address the matter.

“We appreciate Cheatham Middle School’s interest in using UC’s iconic trademarks, which are recognized both nationally and globally. But CMS never requested permission to do so. Just as many other universities and recognizable brands make significant investment to protect their own marks, we reserve the right for exclusive use of the UC marks. We understand this may cause some inconveniences, but we have a responsibility to preserve and protect the University’s rights to its marks.”"

The Scouts Teach Us All a Lesson About Trademark Law; Forbes, February 12, 2019

Tony Marks, Forbes; The Scouts Teach Us All a Lesson About Trademark Law

"David Harford, an attorney with Bryan Cave Leighton Paisner, contributed to this post."...

"Ultimately, the Girl Scout’s suit against the Boy Scouts demonstrates the caution that should be exercised regarding the use of intellectual property in connection with the alteration and expansion of services.  This is a message that all franchisors should take to heart as they rebrand or brand products and services.  The Boy Scouts likely devoted a lot of resources to determine how they should let everyone know that they were offering new services.  Instead of just reaping the benefits of that work, they are now fighting a lawsuit that may result in their inability to take advantage of their new marketing strategy."

How to Crush an Outlaw Biker Club: Seize Its … Logo?; The New York Times, November 21, 2018

Serge F. Kovaleski, The New York Times; How to Crush an Outlaw Biker Club: Seize Its … Logo?

"The Mongols’ marks, like those of other biker groups, are registered with the United States Patent and Trademark Office. Clubs have aggressively protected their patches from unauthorized use.

The Hells Angels have gone after large corporations including Toys “R” Us, the Alexander McQueen fashion line, Amazon, Saks, and Walt Disney, accusing them of infringement on its death’s head logo — a skull in a winged helmet — and other club symbols.

They have usually been successful, reaching settlements that require defendants to cease using the trademarks and to recall and destroy merchandise, among other concessions."