Trademark Infringement Alleged By Donut Joe's Against Donut Chef

Donut Joe’s is a retail donut shop in the Birmingham, Alabama area. In a complaint recently filed in the Northern District of Alabama, Donut Joe’s contends that it registered its trademark “Donut Joe’s” name and its trademark logo (including a donut character wearing a chef’s hat) and that a competing establishment, Donut Chef, which also uses a donut character wearing a chef’s hat as part of its logo, has deceived the public into thinking that it is the same establishment as Donut Joe’s. Donut Joe’s specifically asserts that the Donut Chef name and logo are “colorable imitations” of plaintiff’s name and logo and constitute infringements on the same. The complaint also alleges that the operators of Donut Chef, who are also named defendants in the lawsuit, signed a “confidentiality and non-disclosure agreement” with Donut Joe’s owner in 2010 in furtherance of possible future business relations.

The complaint alleges that the operation of Donut Chef violates the agreement and involves use of confidential information obtained from Donut Joe’s. It further alleges that one of the operators of Donut Chef intentionally induced Donut Joe’s to provide confidential information with no intention of being bound by the confidentiality agreement, and that he used the information to establish his own donut shop as well as providing the same to his son and daughter-in-law, who opened their own donut shop, Heavenly Donut Co. The complaint names Heavenly Donut Co. and its owners as additional defendants and asserts that this third establishment is also using illegally obtained information “to unfairly compete with Donut Joe’s.”

Donut Joe’s seeks to enjoin and restrain the defendants from operating a donut business, from using confidential information, from infringing plaintiff’s trademark, and from using the words “Donut Chef” or “any other colorable imitation of Plaintiff’s registered trademark ‘Donut Joe’s’ or [plaintiff’s logo] in the sale of donuts or similar goods.” Donut Joe’s also seeks profits realized from the sale of Donut Chef products, profits realized through the wrongful use of confidential information, other damages allegedly sustained by plaintiff as a result of infringement, and treble damages under 15 U.S.C. Section 1117. The complaint also demands treble damages for fraud alleged to have been involved in the “accumulation and dissemination of confidential information.”

The case is Donut Joe’s, Inc. v. Werner, et al., Case No. 2:13-cv-01578-UNAS-VEH, in the United States District Court for the Northern District of Alabama, Southern Division, filed on August 26, 2013.