CAKE FEUD

Austin American-Statesman - - LIFE&ARTS - By Dale Roe

Cedar Park woman takes on ‘Cake Boss’ over the show’s name

The Learn­ing Chan­nel show “Cake Boss” could be headed for a name change.

As the re­sult of a law­suit filed by Cedar Park woman, a Seat­tle District Court judge has or­dered Dis­cov­ery Com­mu­ni­ca­tions to stop us­ing the name for the show and any re­lated mer­chan­dise pend­ing trial.

The in­junc­tion against the use of the pro­gram’s name be­comes ef­fec­tive within one month fol­low­ing the fi­nal firstrun air­ing of the third sea­son.

Kel­ley Masters, a fo rme r pro­fes­sional cake dec­o­ra­tor, runs a busi­ness and web­site un­der the CakeBoss ban­ner and sells a soft­ware prod­uct with the same name (the web­site dis­trib­utes CakeBoss-branded cake recipes and bak­ing tu­to­ri­als, while the soft­ware as­sists pro­fes­sional cake bak­ers with busi­ness man­age­ment, in­clud­ing cost track­ing, recipe or­ga­ni­za­tion, cal­en­dar­ing and in­voic­ing cus­tomers). Masters reg­is­tered the In­ter­net do­main Cakeboss.com in 2006 and be­gan sell­ing soft­ware in 2007.

When Masters learned that The Learn­ing Chan­nel (a di­vi­sion of Dis­cov­ery Net­works) was plan­ning to air a tele­vi­sion pro­gram called “Cake Boss” in 2009, she con­tacted the net­work’s le­gal depart­ment. She re­ceived the re­sponse that “Dis­cov­ery did not be­lieve that a tele­vi­sion show named ‘Cake Boss’ could be con­fused with a soft­ware prod­uct of the same name,” ac­cord­ing to the law­suit, and the net­work de­clined to change the name of the show.

Judge Richard Jones, in his de­ci­sion grant­ing the pre­lim­i­nary in­junc­tion, found that Masters has lost trade­mark and cor­po­rate iden­tity due to TLC’s ac­tions. “Cake Boss ap­pears to have sim­ply over­whelmed CakeBoss,” he wrote. “Con­sumers with no ev­i­dence other than the con­sec­u­tive use of the words ‘cake’ and ‘boss’ as­sume that Masters’ web­site pro­mot­ing cake bak­ing soft­ware is con­nected to Dis­cov­ery’s tele­vi­sion show. Masters is likely to prove that it has lost con­trol of its prod­uct iden­tity, its good­will and its abil­ity to move into new mar­kets.”

Masters’ suit claims that the com­pany has re­ceived mis­di­rected fan mail, re­quests for cus­tom cakes and in­quiries about the re­la­tion­ship be­tween the CakeBoss web­site and the show. Users in on­line cake-re­lated fo­rums have at­trib­uted the web­site’s recipes to the pro­gram, ac­cord­ing to court fil­ings, and Jones noted that the CakeBoss web­site is of­ten over­whelmed with vis­i­tors co­in­cid­ing with the air­ing of a “Cake Boss” episode. Dis­cov­ery has threat­ened le­gal ac­tion in re­sponse to Masters’ sales of CakeBoss­branded prod­ucts.

Jones wrote in the Court’s rul­ing that there’s no ev­i­dence that Dis­cov­ery con­ducted even a rudi­men­tary search for prior use of the brand be­fore choos­ing it as the ti­tle.

Dis­cov­ery Net­works would not re­spond to a request for an in­ter­view.

Kel­ley Masters

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