Family Express is in a battle over its square doughnuts. The Valparaiso, Ind. based c-store chain has been offering square-shaped doughnuts since 2005 and is asking a judge to allow it to continue to market its renowned four-sided pastries as “square donuts,” which it says is a generic description and therefore shouldn’t be trademarked.
Meanwhile, Terre Haute, Ind.-based Square Donuts chain has a trademark on the Square Donuts name, and has been making them since 1967, according to NWI Online. The two are beginning expand into each other’s regional territories as Square Donuts opens more shops in the North and Family Express expands South.
For the past 10 years, Family Express has faced threats of legal action from Square Donuts regarding its use of the “square donut” description. Family Express looked to file its own federal trademark, which was rejected, as well as repeatedly tried to come to a co-existence agreement that would let both businesses use the name, NWI Online reported. Now that the two businesses are likely to soon enter the same market, the issue has become more pressing.
“Family Express is faced with the choice of either no longer describing its square-shaped donuts as ‘square donuts’ or being under continuous threat of litigation over said use,” the company’s lawyers stated in the lawsuit. “Family Express uses ‘square donuts’ to describe its goods, namely, that they are square-shaped donuts. This descriptive use is not trademark use and does not infringe defendant’s alleged trademark rights.”