Tag Archives: Starbucks

Best of 2009: Char’ed, I’m sure

Originally posted 2015-01-28 12:07:38. Republished by Blog Post Promoter

First posted December 8, 2009. 
black-bear-coffee-insidesmall-123005
Poor Starbucks.  So much trademark trouble they have!  Other trouble, too.  And now the people who gave you five-dollar coffee in a paper cup had lost another one — one they thought they had won, namely the Starbucks v. Charbucks case (decision here, posted by Marty; the real name of the case is Starbucks Corp. v. Wolfe’s Borough Coffee, Inc.) involving trademark infringement and its genetic freak of a cousin: trademark dilution.

In fact, Starbucks lost this case a lot.  They lost and lost and lost.

Then, they won.  Starbucks won!

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

At least, they won a shot at winning.  Which, given their litigation luck these days, must be like a double espresso administered intravenously, juridically speaking.  And, brand-wise.

That Law.com piece by Mark Hamblett in the last link is a good summary of the docket-slaloming.  For the law lesson, let’s just skip to smart person Rebecca Tushnet, who may or may not be fueled by caffeine when she blogs but all the same has done all the heavy lifting here:

As we all know, Starbucks is big and famous. Wolfe’s does business as Black Bear, a small business that sells coffee via mail order, the internet, and a limited number of New England supermarkets. In 1997, Black Bear began selling a dark roasted blend, Charbucks Blend, and later Mister Charbucks.

Read More…

Another black eye for Starbucks

Originally posted 2009-10-14 13:17:21. Republished by Blog Post Promoter

Has there ever been a more star-crossed brand maintenance campaign than that of that troubled leftover from the dot-bomb days, Starbucks?

No respect in Korea…  embarrassed in Africa… cross-branding eye-crossing in Manhattan… compromising in Arabia… and now this, from Monica Guzman:

Looks like the Rat City Rollergirls will get to keep their logo after all.

ratcitystarbucksThe roller derby team got into a bit of a dispute with Starbucks this spring after the coffee giant asked the team to change its logo, which it deemed too similar to its own.

Both logos are round, “with two stars, sans-serif font and a babe in the middle,” as reporter Andrea James put it.

James wrote more about the dispute in May.

Both the Slog and blog Citizen Rain have pointed out that the coffee giant’s trademark inquiry has been terminated on the United States Patent and Trademark Office Web site.

By “inquiry” she means that after Starbucks’ successive extensions of time to oppose the registration of the Rat City logo were filed, the opposition period was terminated and, indeed, the mark was registered on September 9th.

And hardly surprising.  Talk about a stretch!

Or am I being too contrary?   Ok, so LIKELIHOOD OF CONFUSION seems quite un… likely.  Infringement, no.  But, after all, is there much question that the mark on the left evokes the famous mark on the right?   If you believe in such things — and you should, when they are the law — this does not seem to be a terrible claim for trademark dilution, does it?

Or is Starbucks just playing the odds at this point?

Passing the Sambucks

Originally posted 2005-12-07 10:05:37. Republished by Blog Post Promoter

starbucks-logo(I have excised this from the larger omnibus posting below and added to it.) A woman named Samantha Buck tried to parlay the coincidence of her name — “Sam Bucks” — into a free ride on the back of Starbucks, opening up a real and a virtual “Sambucks Coffee House,” promptly shut down by a Seattle court that ruled that the usage was likely to confuse consumers. Which it was. It’s an old rule of trademark law: There is no absolute privilege to do business under your own name if it would cause consumer confusion with an established trademark to do so. On the other hand, trademark owners can’t sit on their rights indefinitely — which requires them to move against the likes of Sam Bucks pretty fast to preserve them.

Now at least one editorial board doesn’t like the outcome, focusing erroneously on likelihood of confusion (“who would have thought this was really a Starbucks?”), which I’m usually sympathetic to. Here, they’re mistaken, and not just because of trademark dilution. It’s free riding on the strength of the Starbucks trademark, it was done in bad faith (even if not maliciously), and it most assuredly is trademark infringement. Similarly, the old argument that there is some inherent, God-given right to do business under your own name, notwithstanding the likelihood of confusion, has long been discredited. Again, the issue is not cut and dried, but depends on the actual questions of confusion and legality — not some dramatic yeoman “right” to “do business under your own name” — much less a nickname (like “Sam” Buck for Samantha Buck), and much less put it over the lintel on a shop that, for better or worse, larger or smaller, does compete with an established business.

Sorry, Sam. Try decaf.

New brew for Starbucks and trademark?

Starbucks Amended Drawing green dotI’ve written so much, for so long, about the branding and trademark adventures — overwhelmingly unhappy ones — of Starbucks that I’ve pretty much run out of ways of starting blog posts such as this one.  (See what I did there?  — Ed.)  Maybe that (not my blogging, but the facts on the, er, ground) is why, according to Steve Baird, Starbucks is trying to roll out something new and exciting on that score:

We’ll soon see whether coffee truly goes hand in hand with closers, at least in one famous brand owner’s quest for registration of a non-verbal, non-traditional color trademark at the USPTO. I’ve been noticing Starbucks focus on green straws lately, with the door signage shown below, offering a pretty creative use of “look-for advertising” without using those clunky words:

Starbucks Green StrawSo, my search of filings at the USPTO was expected to find at least one supporting a claim of ownership to it, but what I found instead is a brewing battle over the green dot on a white cup . . .

Read the post.  As Steve explains, it’s, well — no big surprise — not going great for the great-coffee-markup people.

Given Starbuck’s track record with its trademarks and its recent demonstratively tin ear with respect to marketing initiatives, you’d think I’d say Starbucks’ initial disappointment (which hardly means anything at this stage, of course) on this initiative is unsurprising.  But, really, how fair is this?  Starbucks is actually a brilliant marketing success at its core, building a multi-billion-dollar empire on really expensive variations of pretty good coffee sold in paper cups in cafes where the only people who can sit down are the first 20 customers and their laptops.

In other words, Starbucks is all about brand: Read More…

Dimming star?

Ann Althouse:

Starbucks used to seem like a luxury brand, and now it feels like a fallback when you can’t get to the real thing.

Ouch. (Via Instapundit.) Ann sees it happening in the automated coffee machines in the shops. But could it have to do with branding incoherence typified by this?
Cobranding hell

Best of 2006: Starbucks — not a “preya” in Korea

Starpreya Starbucks logos

The Korea Times reports that perpetual trademark litigation plaintiff Starbucks has lost two in a row to South Korea’s Elpreya company, which features a line of coffee utilizing the word STARPREYA and the above confusingly similar (says LIKELIHOOD OF CONFUSION®) logo.

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

No likelihood of confusion here? That’s bad enough. Evidently South Korea doesn’t have a trademark dilution statute, much less one like the new caffeinated version now ruling American symbology. If they had, they would have a slam donut-dunk on this claim — on paper, at least.

Read More…

Fishy business

Funny things happen to trademarks in the Casbah.  John Burgess at the Crossroads Arabia blog has a story about a recent incident of Saudi Arabia’s religious police overplaying their considerable hand in connection with the arrest of a Saudi woman for having coffee with a colleague at Starbucks.

Not our topic.  But this aside did grab me, considering the special attention Starbucks and its trademark adventures have gotten on this blog over the years:

Starbucks and the religious police have a bit of a history. When the company first arrived, its logo of a mermaid caused some consternation because some thought they could see breasts beneath all that hair. To avoid problems, Starbucks came up with another logo, a seahorse. [I do wonder how the police reacted when they learned that male seahorses give birth! Talk about ‘gender bending’!!] By 2003, however, the mermaid was back on the signs, cups, and napkins. What happened to occasion that, I haven’t a clue.

Perhaps she swam her way into their hearts, or their coffee cups.  Or, more likely, the heat was off — at least for a while.

Now the heat is back, albeit on questionable grounds.  You can be sure we will milk the story here for all it’s worth.

UPDATE:  Oddly enough, this story has perked up once again.  According to the And Far Away blog, the 1992-2010 Saudi Starbucks logo was not a seahorse, but this “a crown swimming in the sea” — here, you take a look:

The real story, though, says Roba Al-Assi, is the “chadorable” logo Starbucks al Saud is about to switch to — or, which, as she says in the post, she can only imagine….

I’m not sure all her commenter’s “get it” — maybe they hadn’t had their first cup yet.

“DUMB STARBUCKS”: Grasping at laws.

Dumb StarbucksYour blawger, he is conflicted. Part of me does not want to give the—ahem—geniuses behind the DUMB STARBUCKS stunt any more press, but the rest of me feels that you, our readers, deserve to know at least my opinion, which is that there is no way in Hades that the aforementioned—ahem—geniuses will be able to survive any attempt by the real Starbucks to shut down their pretend art installation masquerading (poorly) as social commentary that is really just a pop-up cafe blatant ripping off the latter’s registered trademarks. There, I said it.

If you haven’t already heard: A “parody” [see here for a sort of primer from the LOC archives — RDC] coffee shop sprung up in Los Feliz, California (of course), called DUMB STARBUCKS. According to the Los Angeles Times, “Walking into the… unit, which over the weekend drew long lines while offering free joe, is like entering a real Starbucks, except that almost every label and circular logo inside also features the word ‘dumb.’”

I. MDB.

Caffeinated and conflicted.

A sign at the store, printed on stationary topped with the DUMB STARBUCKS logo, offered answers to “frequently asked questions.” If this isn’t a prank that ends soon, then this flyer will be Exhibit 1 of the plaintiff in the trademark infringement lawsuit that Starbucks brings, because the statements made on the FAQ sheet damn the dumb undeniably.

Is this a Starbucks? No. Dumb Starbucks is not affiliated in any way with Starbucks Corporation. We are simply using their name and logo for marketing purposes.

Um, okay. So you admit right out of the gate that you are marketing something—coffee products, obviously, in direct competition with the company whose registered trademarks you also admit you are using, without permission (that’s implied).

How is that legal? Short answer – parody law.

Putting aside for the nonce that there really is no such animal as “parody law,” that’s an interesting short answer. The FAQ elaborates: By adding the word ‘dumb’, we are technically “making fun” of Starbucks, which allows us to use their trademarks under a law known as ‘fair use’. Fair use is a doctrine that permits use of copyrighted material in a parodical work without permission from the rights holder. It’s the same law that allows Weird Al Yankovic to use the music from Michael Jackson’s “Beat It” in his parody song “Eat It.”

I hardly know where to begin.

If you’re admitting that you’re “technically” making fun of something, then you’re never going to convince a judge or jury or me that you were genuinely attempting to make any real fun. Rather, you’re admittedly trying to exploit a doctrine that you sometimes call a law, which you evidently do not understand at all. Indeed, you’re referring to a copyright law doctrine, but you’re infringing on trademarks. (Sure, those trademarks are protected as well by copyright, but this isn’t a copyright matter.) And, worst of all (not really), you’ve drug Weird Al into this, when everyone knows that Weird Al does not invoke the doctrine of fair use to avoid getting permission to record his parody songs. Weird Al always, always gets permission.

So this is a real business? Yes it is.

Good to know. Because your revenues are going to be turned over to Starbucks Corporation soon.

Are you saying Starbucks is dumb? Not at all. In fact, we love Starbucks and look up to them…

Make it stop. It hurts. It hurts! You just… you just admitted that… I can’t continue. This is just too dumb. Fortunately, Starbucks Corporation is “aware” of this—ahem—hilarious parody and is “looking into it.”

Oh, also, as of yesterday, the establishment reportedly did not appear to have a business license. But that’s probably also okay under parody law.

 

Blurring away

It really does appear that trademark dilution, once the darling of federal judges seeking to enforce trademark rights in gross on behalf of markholders whose brands they recognized, is getting less and less respect. Which in general doesn’t trouble us too much, though it’s not as if Starbucks hasn’t had enough undeserved aggravation on the trademark front lately, in addition to what it stupidly brings on itself. Reports Mike Atkins, linking to Ryan Gile:

The court framed the issue as follows: “…Plaintiff must demonstrate that Defendant’s use of its ‘Mr. Charbucks’ and ‘Mister Charbucks’ marks for one of its coffee blend products creates associations arising from similarity to the Starbucks marks that are likely to impair the distinctiveness of the Starbucks mark or tarnish that mark by harming its reputation.

On Starbucks’ blurring claim, the court found: “…Starbucks’ marks are distinctive and famous. Thus, several of the specified factors weigh in its favor. However, Defendant’s marks, as used in commerce, are not substantially similar to Plaintiffs’ Starbucks marks, and the association Defendant intended to evoke in consumers’ minds through its playful dissimilar mark is not one that would be likely to dilute the Starbucks marks as unique identifiers of Starbucks’ goods and services. Rather, it is dependent on an identification of those marks with Starbucks’ own products and a characteristic of the taste of those products. The record is, therefore, insufficient to demonstrate the requisite likelihood that the association arising from the similarity of the core terms is likely to impair the distinctiveness of Starbucks’ mark, and Plaintiff is not entitled to injunctive relief under that statute.”

Does that sound right to you? Let’s say I used to think solely of Starbucks when I encountered STARBUCKS coffee, but now after encountering CHARBUCKS coffee, I think of both Starbucks and Wolfe’s Borough Coffee. Isn’t that classic dilution by blurring?

(Decision here.)

This does not sound right to me; not only as an analysis of blurring vel non, but as… an analysis. It really just does not make any sense. Again:

Defendant’s marks, as used in commerce, are not substantially similar to Plaintiffs’ Starbucks marks …

CHARBUCKS for coffee not substantially similar to STARBUCKS for coffee? Really?

… and the association Defendant intended to evoke in consumers’ minds through its playful dissimilar mark is not one that would be likely to dilute the Starbucks marks as unique identifiers of Starbucks’ goods and services. Rather, it is dependent on an identification of those marks with Starbucks’ own products and a characteristic of the taste of those products.”

This appears to be a complete non-sequitur. It is an association with a famous mark intended to be evoked in consumers’ minds? But it is not likely to be dilutive?

And what is a “playful dissimilar mark”? “Playful” because the defendant’s logo has a “cute” bear in it? Another analytical flaw! In fact, those things’ll tear your guts out over a Ring Ding wrapper!

We never much liked trademark dilution, and we’re not alone, but that doesn’t mean it should die by a million small judicial cuts.  Something about Starbucks, though, seems to bring out the haters. Come on, it’s pretty good coffee, people!

Absolutely flawed

Michael Atkins, the estimable Seattle Trademark Lawyer (true, there are others!), writes on the subject both Matthew and I have written about at length here:  The outcome of the CHARBUCKS trademark case.  He says this:

Because trademark dilution doesn’t require an owner to show likelihood of confusion — and, therefore, provides super-trademark rights — the federal statute limits such protection to the owners of truly “famous” trademarks, which the statute defines as trademarks that are widely known on a nationwide basis. In other words, the dilution cause of action is only available to the owners of household names.

STARBUCKS is clearly one such name. Therefore, Starbucks Corp. was able to avail itself of the dilution cause of action against coffee roaster Wolfe’s Borough Coffee, Inc., d/b/a Black Bear Micro Roastery, which had named some of its coffee CHARBUCKS BLEND and MISTER CHARBUCKS. Starbucks argued the roaster’s doing so was intended to and did call to mind Starbucks’ famous STARBUCKS brand, so Starbucks was entitled to an injunction stopping such use. . . .

[I]n the end, the Second Circuit found that despite having super-trademark rights, Starbucks did not prove the roaster’s marks were likely to dilute the famous STARBUCKS brand.

Michael AtkinsIn making that decision, the Second Circuit weighed the factors set forth in the statute. It found the district court was not wrong when it concluded the parties’ marks were not very similar. It also found the district court was not wrong to conclude that Starbucks’ consumer survey was flawed because it did not reflect how the parties’ marks were used in the marketplace. Therefore, it found the survey “only minimally” proved that consumers actually associated the roasters’ marks with STARBUCKS.

The court found three of the statutory factors — distinctiveness, recognition, and exclusivity — favored Starbucks, but “the more important factors in the context of this case are the similarity of the marks and actual association.”

This led the Second Circuit to conclude: “Ultimately what tips the balance in this case is that Starbucks bore the burden of showing that it was entitled to injunctive relief on this record. Because Starbucks’ principal evidence of association, the Mitofsky survey, was fundamentally flawed, and because there was minimal similarity between the marks at issue, we agree with the District Court that Starbucks failed to show that Black Bear’s use of its Charbucks Marks in commerce is likely to dilute theStarbucks Marks.”

This goes to show that while potentially powerful — really powerful — the federal dilution statute does have its limits.

Right.  The only problem is that, let’s face it, no one has any idea what they are.

Because if you would have asked me what would be a good test case for the dilution cause of action based on blurring, I would have bet on this one.  And I say this as not-the-biggest-fan of dilution.  But it is the law.

But what is the law?

STARBUCKS and CHARBUCKS.  For coffee.  Not one of them, but both of them.  Second Circuit:  “Minimal similarity between the marks at issue.”

“Minimal”?

Maybe this is why some trademark lawyers get paid so well:  We seem to have no idea what we’re talking about.  The outcomes of so many of our cases are, it seems, completely unpredictable — big brand or small.  As for the business owners and the managers and the shareholders who want, who you’d think are entitled to, some degree of predictability in the law, so they could govern their decision-making on both enforcement and business issues?

Not happening.  Because this legal remedy “has its limits.”  Well, our client asks — what are these limits? Read More…