Maine bakery The Holy Donut received some negative attention after a Herald and News story documented their dispute with Holey Donut, a Klamath Falls bakery.
On Thursday, Holy Donut issued a press release that said it attempted to work with the Newtons in Klamath Falls so the small business could keep its name, as long as the Newtons promised not to expand to additional locations.
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The release in its entirety:
We would like to provide some clarity around the suit we chose to file against Holey Donut Cafe in Oregon.
We trademarked our company name to protect the brand we are building as many businesses do.
One of the realities of owning a trademark is that you are bound and obligated to defend it. If you choose not to, you will lose your rights to it. Our trademark covers our logo design as well as several phonetically similar versions of Holy Donut, including “Holey.”
One of the primary reasons for trademarking a brand is to help prevent consumer confusion from similar looking or sounding brands. In today’s digital age we have had several instances where we were confused with other Holy Donuts from as far away as Hawaii and Arizona.
These instances of confusion spurred discussions with these entities that were using our trademark.
Through the years, we have had an obligation to approach other shops that were using our trademarked name and find a resolution that would work for both our companies. When approached most everyone is agreeable to changing their name as they understand the nature of trademarking.
We have chosen to enter into coexistence agreements with several entities that are outside of New England that have agreed to not add additional locations. In exchange, we allow for them to continue using their current name at their current location.
We have one such agreement in place with a young man in the Midwest who operates a Holy Donut food truck to put himself through college. I could not have more respect for this young man’s entrepreneurial spirit and was happy to allow him to continue earning his college tuition.
We are not trying to stop entrepreneurs from earning a living. We simply have a duty to protect our trademark. These agreements allow us to both fulfill our obligation to protect our trademark in the eyes of the FTC and allow small businesses to continue to function.
We were made aware of The Holey Donut in Klamath Falls in December of 2019 shortly after they opened in a Klamath Falls news article stating they would like to have multiple locations.
I contacted the owner to inform him that we have a trademark on The Holy Donut which included their spelling of the word “Holey.” I asked that before they get too established that they either change their name or enter into a coexistence agreement with us, agreeing they would not expand beyond their current location utilizing a name that infringes upon our trademark.
In return, we would allow them to continue under their current name in their current location. Chris Newton refused to sign a coexistence agreement and stated he would just change the name to the Donut Hole. I thanked him for understanding and wished him well.
In June of 2020 we became aware that Mr. Newton did not honor our verbal agreement to change their name. They also added a food truck bearing the same name. I reached out again to Mr. Newton via their Facebook page and left several voicemails for him without a response over the course of a couple months.
We then asked our attorney to send a certified letter requesting that they now change their name hoping this would elicit a response and we could have another conversation. This letter was also ignored.
At this point we had two choices; do nothing and risk losing our trademark or file suit to defend our trademark and our brand which we have spent a great deal of time and money to secure.
It really was not much of a decision for us at this point.
As far as being portrayed as a bully by the owners of Holey Donut, that simply is not accurate.
We attempted on multiple occasions to work with them. It did not have to come to this. In the end we have a well-documented history of doing what is right in our communities and we have no doubt that our actions in this scenario reflect that.