Tuesday, November 13, 2007

Starbucks suing another small coffee shop over logo.

I half expected Seattle Trademark Lawyer to cover this one before me – never one to miss a story about Seattle-based coffee behemoth Starbucks threatening to file trademark infringement lawsuits against mom-and-pop coffee shops using a name or logo similar to the Starbucks name or famed green encircled siren logo (pictured above – not that you didn't already know what it looked like). Click here to read STL's many blog posts on Big-Green’s past trademark enforcement efforts (with mixed results).

This current story has apparently been brewing (pun intended) since late October. New stories ran in The Macomb Daily on October 28th and in the Detroit Free Press on the 9th.

On October 22, 2007, Conga Coffee & Tea (“Conga”), a coffee shop in Mt. Clemens, Michigan, apparently received a cease and desist letter from counsel for Starbucks Coffee Co. (“Starbucks”) about Conga’s logo – a green circle with a black elephant silhouette in the middle (pictured below). Conga is owned by Michael Dregiewicz, who purchased the 11-year-old store back in February.

Starbuck’s counsel, Hope Shovein of Brooks Kushman, P.C., stated in her letter to Dregiewicz that Conga’s logo is "likely to cause consumers to think that Conga is an authorized licensee of Starbucks." The letter gives Conga a two week deadline to stop using the logo or face legal action. The letter also states that Starbucks is willing to negotiate a reasonable phase out the logo.

Dregiewicz has hired Melanie Frazier, of Romain, Kuck & Egerer, P.C., to defend Conga’s use of the logo. Dregiewicz has estimated the cost of changing his logo would cost up to $5,000 for reprinting business cards, paper cups, and other products as well as changing the store’s awnings.

Vegas™Esq Comments:

If Starbucks chooses to file an infringement action, it will likely include both infringement based on likelihood of confusion (under §32 and/or §43(a)) as well as trademark dilution by blurring under §43(c).

With respect to the possibility of Starbucks using a §43(c) dilution claim against Conga, I’ll defer to “dilution-guru” Michael Atkins for comments. Check out his recent post entitled “How Courts Have Interpreted the Trademark Dilution Revision Act” on the uncertain status of trademark dilution jurisprudence.

Perhaps Starbucks may have been emboldened by its recent victory by the Second Circuit in Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 477 F.3d 765 (2nd Cir. 2007), where the court applied the Trademark Dilution Revision Act of 2006 (with its likelihood of dilution standard) rather than the Federal Trademark Dilution Act of 1996 (with its actual dilution standard) to Starbuck’s injunctive relief claim. If the new standard applies in the 6th Circuit, Starbucks may have an easier case to make for dilution by blurring than it would if it had to prove actual dilution.

If Starbucks chooses to pursue dilution, one wonders if Conga’s use in commerce of its logo was before Starbuck’s logo became famous? Conga has apparently been using its logo for 11 years, which would put its initial use in commerce around 1996. While Starbucks was founded in 1971 and went public in 1992, the current incarnation of Starbuck’s famous logo was applied for federal registration on January 15, 1993 – a Section 1(a) application claiming date of first use as August 30, 1992 for retail services (among other goods and services) with the color green claimed as a feature of the mark. The logo was registered on January 11, 1994. It is very likely that Starbuck’s logo became famous during this four year time period before Conga started using its logo, but it is an issue nonetheless.

Likelihood of Confusion
As for likelihood of confusion, Starbucks undoubtedly has a very strong mark and the services at issue are identical. As such, there is a greater likelihood that the public may mistakenly assume an association between Starbucks and Conga. The greater the likelihood that the public may make such an association, the less similarity that is required among the marks to find likelihood of confusion. The issue will come down to similarity of the marks, in particularly the visual similarity of the two logos.

On the one hand, when you look at the logos side-by-side, there is very little similarity other than the green circle. However, if you are driving around and you notice a round green logo, you may be confused into believe that it is a Starbucks (until you get close enough to see the sign, in which case you drive another block to the actual Starbucks – there is one on every corner after all).

In addition, coffee drinkers, especially Starbucks loyalists, do exercise some degree of care when it comes to getting their Starbucks-fix, and thus I do not think that they would be confused into thinking that Conga is somehow going to provide them the same “decaf Grande half-soy, half-low fat, iced vanilla, double-shot, gingerbread cappuccino, extra dry, light ice, with one Sweet-n'-Low and one NutraSweet” (the famed Starbucks Test) that they have come to expect from Starbucks. Then again, I’m sure there are those mornings when consumers are so desperate for their java that they may head towards the closest “Green circular logo” they can find. But in Mt. Clemens, Michigan?

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