Thursday, November 21, 2013

The Cow Says "Moo," the Infringer Says "Yo, Adrian"

For those of you who read my post about Starbucks' trademark suit loss to the little Black Bear, and really were hoping to see Starbucks come out on top because, let's face it, that coffee is so scrumptious (hashtag deliciousness), well I've got some good news for you!
Starbucks' 2013 Holiday Season Offering
No, I'm not talking about that cold-weather medicine (hashtag spoonful of sugar) pictured above, I'm talking about some trademark law rebound for Starbucks: a victory over an even smaller foe. This suit came against a single-store coffee shop in Bangkok, "Starbung Coffee." Take your sympathies on the owner, Damrong Maslee, lightly though, because unlike Black Bear's "Charbucks" mark, this one, well, is a no-doubter:
Can you spot the differences? Circle the differences you see in red.
Hint: there are only about 5 on the marks themselves.
Maslee has since changed the name of his shop to Bung's Tears; I'd speculate that this was a slight at Starbuck's causing Maslee all this distress (hence the tears), except that my favorite part makes it pretty difficult to back up that theory. That's because the trademark infringement claims by Starbucks made Maslee somewhat of a local celebrity, "which has apparently been good for business."

Ever seen such a happy loser?
.....
...
wait...

Monday, November 18, 2013

Starbucks battles Black Bear over Trademark Law (Likelihood of Dilution)... and loses

This court clash was a classic David v. Goliath; this time a trademark law case in the 2nd Circuit Court of Appeals between Starbucks and Charbucks. In finding that there was no likelihood of dilution, the court noted the factors for dilution by blurring:

  • (i) The degree of similarity between the mark or trade name and the famous mark.
  • (ii) The degree of inherent or acquired distinctiveness of the famous mark.
  • (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
  • (iv) The degree of recognition of the famous mark.
  • (v) Whether the user of the mark or trade name intended to create an association with the famous mark.
  • (vi) Any actual association between the mark or trade name and the famous mark.
The court found that there was no likelihood of dilution by blurring. The full case name is Starbucks Corporation v. Wolfe's Borough Coffee, Inc., 12-364-cv (2nd Cir. 11-15-2013), check it out if scholarly reading is your bag, otherwise check out this link to a Reuter's recap.

As with all cases, it's complicated, and some case history is helpful (like knowing the 2nd Circuit previously found no likelihood of confusion, and thought the survey evidence was insufficient, and that there was no bad faith in adopting the "Charbucks" mark). 

That said, doesn't this sound like a bad decision? (pun intended).

Think it's wrong? Think it's right? Tell me! @ajswjTM and @IPLawTalkinGuys on twitter, Hamilton IP Law, PC on facebook.

I guess the ultimate lesson is, don't mess with bears, no matter how little.
http://www.trademarkandcopyrightlawblog.com/uploads/image/starvchar(1).png