Trademark Cease and Desist Based on Likelihood of Confusion

While this specific occurrence happened a couple years ago, our Chicago trademark attorneys believe that this matter showcases a variety of issues that can arise if one were applying for a federal trademark registration or how your business could protect yourself from trademark infringement.

Starbucks, the behemoth Seattle based coffee company worth an estimated $16.447 billion in 2014, sent the owner of a single location brewery in Missouri a cease and desist letter to prevent the small business owner from infringing a Starbucks trademark. The trademark in question, FRAPPUCCINO.

The owner of the Pub and Brewery, took two of his beers and mixed them together. The result, one customer thought it tasted like a “Frappicino,” as they stated on a website. Starbucks gets wind of this and immediately sends the brewery owner a letter demanding that his “Frappicino” beer would cause confusion among consumers in regards to Starbucks’ FRAPPUCCINO trademark. Starbucks’ attorney mentioned that while the beer was different by one letter, they were phonetically identical. Thus, Starbucks requested the brewery owner to stop all use of “Frappicino,” notify the website that the customer posted on to remove the post containing “Frappicino,” and to agree to not use any Starbucks trademarks in the future and to agree to not use any trademarks that would cause confusion or dilution with Starbucks’ trademarks. This situation is a great example of various topics that can arise when selecting a trademark for your business.

First, the benefits of federal trademark registration. Because Starbucks has a federal trademark registration for FRAPPUCCINO, they have several trademark benefits that arise solely through their registration. Starbucks has nationwide priority to use FRAPPUCCINO as of the date of the filling of their trademark application, and with it, the right to prevent anyone else from using a confusingly similar trademark (hence the cease and desist letter). If this matter went to court, Starbucks has an automatic right to sue in a Federal Court for trademark infringement arising under The Lanham Act, a federal statute. Also, in court there is a presumption that the FRAPPUCCINO mark is a valid registration, whereas a common law trademark (one that is not registered) you would have to have evidence that the mark is a valid trademark.

Second, the likelihood of confusion factors. At our Chicago trademark law firm, each time we perform a trademark search and clearance, we are looking on the USPTO database for any registered marks that a client’s proposed mark would likely cause confusion with. Some of the factors (Du Pont Factors) that we analyze include: the similarity of the entire trademarks as to their sound, appearance, and commercial impression; the similarity of the goods; the market channels that are used with the marks; the fame of the prior mark; and if there has been any actual confusion between the marks, among others. Looking at our example: FRAPPUCCINO and “Frappicino” are practically identical; the sound between the two are identical; FRAPPUCCINO is potentially a famous mark, given the endless number of Starbucks locations around the globe; however the goods associated with both terms are different. Coffee vs. Beer. As is the likely channels used to market and sell the products. Thus, when performing a likelihood of confusion analysis, you must take all of the factors together and each specific case is different and unique from another case.

Third, the effects a misspelling has on a trademark registration or infringement suit. Generally, a misspelling of a trademark has little to no effect on the analysis. The test is not whether the marks can be distinguished when placed side by side, it is whether the marks are sufficiently similar in terms of their overall commercial impression that confusion to the source is likely. Therefore, in our example, the misspelling would not alter our analysis.

Lastly, the value that can come from a trademark. Trademarks have the potential to be very valuable assets for any company that are worth defending. Starbucks has certainly spent massive amounts of money in developing each of their products, and ensuring the goodwill that builds up with each of their trademarks. It is important for any business to create a business name and product name that is trademarkable. This allows the company exclusive use to these names and the ability to truly build a power brand.

If your Illinois business is in the process of selecting a trademark, going through the registration process, receiving a cease and desist letter, or believe that someone else is infringing your trademark, contact our Chicago trademark attorneys. Our trademark attorneys haveexperience handling trademark clearance searches, guiding clients through the federal trademark registration process, and handling potential infringement claims.

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