Trademarks: Likelihood of Confusion and Dilution


It’s All About the Frap

Coffee giant Starbucks takes protecting its trademark Frappuccino seriously. Starbucks owns the trademark “FRAPPUCCINO” in the United States. For those who are not familiar with a Starbucks Frappuccino, it is a line of frozen coffee beverages that is blended with ice and other sweet ingredients and usually topped with whipped cream. Bottled Frappuccino drinks can also be found in stores and vending machines. About a billion dollars worth of Frappuccino drinks are sold annually around the globe.

So, when Mexican company Procesadora Salvic SA de CV wanted to trademark the word “FRIOCCINO” for their coffee beverages, Starbucks raised opposition. In its opposition, Starbucks claims that there is a likelihood of confusion between “Frappuccino” and “Frioccino.”

To determine if a likelihood of confusion exists, a court weighs the following factors:

(1) the strength of the mark;

(2) the proximity of the goods;

(3) the similarity of the marks;

(4) evidence of actual confusion;

(5) marketing channels used;

(6) the type of goods and the degree of care likely to be exercised by the purchaser;

(7) defendant’s intent in selecting the mark; and

(8) likelihood of expansion of the product lines.

Starbucks also claimed that the mark “Frioccino” would “dilute” its famous mark. The Lanham Act , which is the primary federal trademark statute of law in the United States, defines “dilution” as “the lessening of the capacity of a famous mark to identify and distinguish goods or services.” A mark is considered famous if it is widely recognized by the general consuming public of the United States. Factors that are considered when determining if a mark is famous is the duration, extent, and geographic reach of advertising and publicity of the mark, the amount volume and geographic extent of sales of goods or serviced offered under the mark, and the extent of actual recognition of the mark. 15 U.S.C. § 1125(c)(2)(A).

When determining whether a famous mark has been diluted the following factors are considered:

(1) The degree of inherent or acquired distinctiveness;

(2) The duration extent of use;

(3) The amount of advertising and publicity;

(4) The geographic extent of the market;

(5) The channels of trade;

(6) The degree of recognition in trading area;

(7) Any use of similar marks by third parties; and

(8) Whether the market is registered.

Dilution can occur two ways, by blurring and by tarnishment. Blurring occurs when a mark loses its unique and distinctive ability to act as a source identifier due to the use of the mark on several different goods and services. Tarnishment occurs when the accused mark’s use creates negative associations with the mark.

Obviously, this is not the first time Starbucks has been in the news for defending its trademarks. Most recently, Starbucks was in the news over a trademark cease and desist letter it sent to a small Missouri brewery, Exit 6 Pub and Brewery, for its use of the word “Frapucino” (with one “c” instead of two) as a name for one of its beers. It was bad press for Starbucks as the owner of Exit 6 wrote a sarcastic letter in response and enclosed a $6.00 check to cover the “profits” the brewery made from the name. Exit 6 ultimately changed the name of the brew to the “F Word,” but not before the story had gained traction on social media.

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