Who’s the Boss?: Settlement Allows Buddy Valastro To Continue To Use “Cake Boss”

In September 2010, John and Kelly Masters of Masters Software, Inc, filed a trademark infringement suit against Discovery over TLC’s use of the title of the hit show, “Cake Boss.”  The Software Company has owned a trademark on “CakeBoss” since 2007- two years before TLC aired, “Cake Boss” in April 2009.  According to the Masters, as Buddy Valastro became more popular, its company was flooded with fan email intended for TLC.  This, the Masters claimed, was enough evidence in and of itself to show that there was sufficient consumer confusion to warrant a trademark infringement suit.  A Washington state federal judge issued a temporary injunction, which barred TLC from using the title following the last episode of the third season. The judge, in issuing the injunction, stated that while TLC may not have had constructive notice that another company was using a variation of “Cake Boss,” given its “multimillion-dollar investment in the show, TLC certainly should have done even the smallest amount of research on the Internet and found out.”

On October 22, Plaintiffs Masters Software, Inc., and defendants Discovery Communication Inc., TLC, and Buddy Valastro reached an amicable and confidential settlement.  The settlement specifically allows Masters Software to have the continued use of the name CakeBoss “in exclusive connection with their business management software for bakers and in non-exclusive connection with online recipes and cake decorating kits.” The icing on the cake: per the stipulations of the settlement, TLC will have the legal rights to the name “Cake Boss.”

The standard for a trademark infringement is a “likelihood of confusion.” More specifically, the standard looks at whether there is a chance that consumers would assume that the businesses are linked in some way.  In order to determine the likelihood of consumer confusion, the courts typically look at various factors. See Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820 (1961).  Some of these factors include, but are not limited to the following: “(1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used.”  The strong similarity between the Masters’ “CakeBoss” and TLC’s “Cake Boss” is almost too striking for words. The only difference between the two titles is a space in between the words Cake and Boss.  Even more so, the Software Company sells business software to small business owners and home bakers.  TLC’s “Cake Boss” follows lovable Buddy Valastro and his family members/fellow bakers as they create intricate and unique cakes for customers.

It seems as though this situation could have been avoided had TLC conducted research on the availability of “Cake Boss” prior to using that name.  In most instances, such behavior would not stand. Indeed, if this issue had gone to trial, TLC may have been permanently barred from using a name that many people have come to associate with intricately and uniquely designed cakes. So one might say that this settlement allowed TLC to have its cake and eat it too.

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*Tierryicah Mitchell is a second-year law student at Wake Forest University School of Law and is Secretary of the Black Law Student’s Association. She holds a Bachelor of Arts and Science in Political Science and History from the University of North Carolina at Chapel Hill.  Upon graduation in 2012, Ms. Mitchell plans to work for the federal government.

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