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.