A Likelihood of Confusion Cease and Desist Order

Trademark Likely To Cause Confusion

Starbucks sent a cease and desist letter to a small craft brewery stopping use of the registered trademark FrappuccinoStarbucks, the massive Seattle based coffee company worth about $16.447 billion in 2014, sent the owner of a small town brewery outside of St. Louis, Missouri, a cease and desist letter to prevent them from infringing a Starbucks trademark. The trademark in question, FRAPPUCCINO.

The owner of a Pub and Brewery, combined the flavors of two beers, and one customer posted to a beer website that it taste like a “Frappicino.” Starbucks took notice of this and sent the brewery owner a letter telling him that his “Frappicino” beer would cause confusion among consumers in regards to Starbucks’ FRAPPUCCINO trademark. Starbucks’ attorney argued that while the beer’ name sounds phonetically identically to the Starbucks mark, even though it was misspelled by one letter. Because of this, Starbucks requested the brewery owner to stop all use of “Frappicino,” notify the beer owner to remove the website 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 is a very helpful example of multiple topics that can arise during the trademark selection process.

Trademark Rights To Send Cease & Desist Letter

First, the benefits of federal trademark registration. With the federal registration of FRAPPUCCINO, Starbucks has several trademark benefits that arise solely through their registration. Starbucks has a nationwide priority to use FRAPPUCCINO as of the date of the initial application, the right to prevent a subsequent user from using a confusingly similar trademark. If a trademark dilution or infringement lawsuit were to arise, Starbucks has an automatic right to sue in the Federal Courts. Also, there is a presumption that the FRAPPUCCINO mark is a valid registration, whereas  with a common law trademark (one that is not registered) evidence would need to be submitted in trademark litigation to show that the mark should be afforded protection.

Second, the likelihood of confusion factors. At out trademark law firm, each trademark search and clearance that our trademark attorneys complete, we are analyzing the USPTO database for any prior registrations that a client’s proposed mark would likely cause confusion with. A couple of 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. Using the Starbucks case: FRAPPUCCINO and “Frappicino” are nearly identical; the sound between the two marks are identical; FRAPPUCCINO may be considered a famous mark (which is necessary in a trademark dilution action); however the goods associated with both terms (coffee vs. beer) are different, so too is the the likely channels of trade for the products. Overall, 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 potential effects of a misspelling. Typically, the misspelling of a trademark has little, if any, effect on the likelihood of confusion 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, this misspelling would likely not matter in our conclusion.

Lastly, the value of federal trademark registration. Trademarks have the potential to be a highly valuable business asset that is worth protecting. Starbucks has most likely spent lots of money developing each of their products, including naming and logos, and ensuring that goodwill is properly protected. 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 business, while involved in the trademark selection process, attempting to navigate the federal registration process, has received a cease and desist letter, or believe your trademark is being infringed or diluted, contact our trademark attorneys.

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