Think of it as David vs. Goliath but with sprinkles.
For two weeks, the Boulder City Company Store had a bright, pink banner on the side of its building. One couldn’t miss it or its subtle message. It was in reference to Pinkbox Doughnuts, which is planning to open on Nevada Highway in the former 7-11 location. Their “Coming Soon” sign has been in place for well over a year after the Siegel Corporation purchased the building.
“I’m trying to defend my small business from big, corporate America coming into town and taking away my customers, and both my livelihood as well as possibly some of my employees if I have to reduce my staff size,” said Tara (Leon) Bertoli, the owner of the Boulder City Company Store, as to her reasoning behind the banner. “So much of the feedback I received from the public was positive. Many said, ‘Good for you, Tara. Good job for sticking up for yourself.’ Basically, I have to stand up for myself and people understand that.”
Pinkbox didn’t agree.
This past Thursday, Bertoli was given a cease-and-desist letter from the Pinkbox corporation, citing copyright infringement because of the banner’s colors, font and the use of the name. The banner stated, “Get donuts and coffee on the other side of this pinkbox.” BCCS sells both.
Bertoli said she did her due diligence when helping to design the banner. She said she found that “pinkbox” is not copyrighted by the company (a different company holds the copyright) but that “Pinkbox Doughnuts” is.
“I wasn’t planning to keep it up forever because I hate the color Pepto Bismol pink for our town,” she said. “I would never intentionally leave the sign up because I feel it goes against what this town should reflect. I was trying to make a point.”
In the letter, which Bertoli posted on social media, attorney Sean Thueson, general counsel for Pinkbox Doughnuts, wrote that it came to their attention that Boulder City Company Store had created and was displaying a sign using Pinkbox’s “stylized logo, its name and its trade dress, including its pink color scheme and sprinkles.”
He went on to write that Pinkbox owns a trademark on its logo, name and trade dress, which is the overall image of a product used in its sales or marketing. He also stated that unless she complied with several stipulations, including the removal of the banner, BCCS could face damages in a hefty lawsuit.
“Due to the infringing nature of the conduct, if necessary, Pinkbox will initiate litigation to stop the infringing behavior and seek damages,” the letter stated. “Damages would include an accounting and disgorgement of all amounts received as a result of BCCS’ infringing conduct, as well as statutory and treble damages, attorney’s fees and costs.
“It is also clear BCCS is intentionally using Pinkbox’s intellectual property to cause consumer confusion and by doing so, is engaging in deceptive and illegal trade practices.”
Thueson wrote that the sign may cause consumer confusion and that BCCS is somehow affiliated with Pinkbox.
“We believe BCCS’ actions are willful and therefore Pinkbox will be entitled to obtain punitive damages associated with BCCS’ offensive attempt to trade on the goodwill of Pinkbox. As such, the amount of damages incurred is the infringing conduct, if not stopped, may exceed $25,000,000.”
It added that the banner must be taken down within 24 hours of Bertoli receiving the letter.
Last Wednesday, Pinkbox came before the city’s planning commission and were denied a request to have a pair of large, freestanding statues on their property. (See article on page 6).
Thueson references that meeting, which he erroneously refers to in the letter as Boulder City Council. Bertoli spoke at the meeting and shared her feelings about Pinkbox’s request to the commission. She feels that one of Pinkbox’s representatives at that meeting saw the banner Wednesday, and thus, sent the letter the following day.
Thueson wrote that the company, “will not tolerate the false and disparaging statements made by you last night that were published in the Boulder City Council meeting. As your statements constitute defamation per se, they are therefore actionable even if you were to claim Pinkbox did not suffer any actual damages. As your statements were relied on by the Council to deny Pinkbox’s sign variance request, certainly Pinkbox has suffered actual damages for which you are responsible.”
Attempts to reach Thueson for further comment were unsuccessful.
In regard to the letter, and the threat of a $25,000,000 lawsuit, Bertoli took it in stride.
“I was flattered they think I’m worth that much,” she said, smiling. “But I feel in this case, any publicity is good publicity. I’ve had my fun.”
By 11 a.m. Friday, the banner was down.
“I’m just a single shop owner trying to protect my den,” she added.