by Tamera H. Bennett
With a Starbucks on every corner, the term "barista" is part of our everyday vocabulary. For those not familiar with the term, Barista is Italian for barman, bartender or barmaid.
On March 8, 2007 Starbucks U.S. Brands Corporation (Starbucks Coffee) filed an extension of time to oppose the trademark application for the mark "Barista" for "retail store services featuring beverages, coffee and convenience items" in class 35. This application was filed by RaceTrac Petroleum, Inc.
Starbucks owns two U.S. trademark registrations for "Starbucks Barista" for electric coffee grinders. These are Starbucks only U.S. trademark registrations that contain the term barista.
There are several U.S. trademark registrations and applications owned by third parties that contain the word barista. Some applications were opposed by Starbucks and in some instances the marks were abandoned. One can only ponder if the marks were abandoned because a settlement was reached with Starbucks. Yet, there are still marks containing the word "barista" currently registered and co-existing with Starbucks' use of the word.
Does Starbucks actually use the term barista as a trademark when it comes to the retail services of providing coffee and other beverages? As an avid consumer of their products, I see no sign of barista being used as a service mark when I visit their establishment.
Why did Starbucks decide to oppose this particular application? I believe it is because of the retail store services. Starbucks may not have a registered trademark for "barista" for retail services, but clearly, consumers associate a barista with purchasing Starbucks coffee in a retail setting.
Will Starbucks succeed? I do not know. It will be interesting to follow this opposition proceeding.