Starbucks Trademark Litigation

Seton Hall Call For Journal Articles

by Tamera H. BennettApril 23, 2008

The folks over at Seton Hall Law Review requested I pass along the following information:

Journal of Sports and Entertainment Law Call for Submissions!

The Seton Hall School of Law Journal of Sports & Entertainment Law is seeking submissions for possible publication in future issues. If you are a law professor, other type of professor, practicing attorney, judicial clerk, law student, or graduate student who has written a substantive piece that pertains to sports or entertainment law, please consider submitting your work.

For more information or to submit a piece, please e-mail Tara Touloumis, Articles Editor, ttouloumis at gmail.com. Thank you!

Update on Barista Trademark Application

by Tamera H. BennettJune 20, 2007

The time has come and gone for a party to oppose the "Barista" trademark application filed by RaceTrac Petroleum, Inc. This blog reported an extension of time to oppose the pending application was granted to Starbucks through June 13, 2007.

No opposition proceeding was instituted and the "Barista" trademark application is not abandoned. We will continue to watch to see if the application abandons which means only one thing ... somebody settled with Starbucks.

TAMERA BENNETT ADDS MEDIATION PRACTICE

May 20, 2007 Attorney Tamera H. Bennett recently received her certificate of completion of the Texas 40 Hour Mediation Course. Tamera will be available to mediate business conflicts with an emphasis on trademark, copyright and entertainment law disputes.

For more information, feel free to contact Tamera at info@tbennettlaw.com.

STARBUCKS BARISTA TRADEMARK

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.

UPDATE ON STARBUCKS V. XINGBAKE

chinese_starbucks_web.gif

by: Tamera H. Bennett

On January 5, 2007, Forbes published that Starbucks succeed in its action against Shanghai coffee house XingBake.

The Xingbake coffee house used a very similar logo to the famous Starbucks logo. Xing, pronounced "shing" means star in Chinese, and bake, or "bah kuh" sounds like bucks. The name, logo, graphic elements, and meaning were all considered in determing an infringement.

The court ordered Shanghai Xingbake to cease using its name, pay $62,000 (US$) in compensation to Starbucks, and issue an apology in a local newspaper.

see earlier post here on 12/8/06

Read the Forbes post

Starbucks Ruling No Big Deal in China

Starbucks, Sambucks, Starboch, Charbucks, Xingbake

by Tamera H. Bennett On December 1, 2005 a federal judge in Portland ruled that Samantha Buck-Lundberg ("Sam Buck") was infringing on the Starbucks trademark by using the "Sambucks" name on her Astoria, Oregon coffee shop. Buck-Lundberg decided to fight Starbucks and was found to be "willingly infringing" on the trademark.

Although in most situations a court cannot order a person to stop using their legal name as part of their business name, the court found that "Sam Bucks" was a nickname and they further found that consumers were confused by the name.

Starbucks aggressively protects its trademark rights and has sued numerous "potential" infringers in the United States and internationally.

Other recent defendants in Starbucks actions include "Starboch" (a Texas beer), "Charbucks" (a dark roast coffee brand), and "Xingbake" (a Chinese coffeehouse chain, whose name when translated from Chinese to English sounds like "Star Buck").