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Sonic v. Supersonic Coffee v. AKA Coffee: Bullied to a better brand?

Posted in Branding, Dilution, Famous Marks, Trademark Bullying, Trademarks, TTAB

A specialty coffee roastery in San Francisco, Supersonic Coffee, has decided to rebrand to the name AKA Coffee, as reported yesterday.  The impetus for the rebrand was an opposition at the Trademark Trial and Appeal Board (TTAB) by the national fast-food chain Sonic, against Supersonic Coffee’s trademark application for the word mark SUPERSONIC.  This trademark application (Serial No. 86382164) sought registration of the mark SUPERSONIC for various coffee-related goods, such as “beverages made of coffee; beverages with a coffee base; coffee … roasted coffee beans,” etc.

Sonic filed its Notice of Opposition at the TTAB last year against Supersonic’s trademark application, alleging that registration should be refused under Trademark Act Section 2(d) based on a likelihood of confusion with Sonic’s registered marks, including: SUPERSONIC® for hamburgers and burritos; and various SONIC® word and design marks for drive-in restaurant services, hamburgers, onion rings, french fried potatoes, hot dogs, candy, and soft drinks.

The Notice of Opposition also asserted a likelihood of confusion with Sonic’s marks SONIC WAVE® for drinking water; SONIC SPLASH® for flavored waters and soft drinks; SONIC SUNRISE® for orange based fruit juice; SONIC CHILLERS® for candied ice milk confections; and SONIC BOOM® for energy drinks.

Sonic also alleged that its registered marks are famous, and that registration of the SUPERSONIC mark should be refused under Trademark Act Section 43(c) because the use of that mark would be likely to dilute Sonic’s famous marks.

Supersonic Coffee never filed an answer to the Notice of Opposition.  Therefore, in January of this year, the TTAB entered a default judgment against Supersonic Coffee and refused registration of the applied-for SUPERSONIC mark.

Now, Supersonic Coffee made the decision to rebrand to a new name:  AKA Coffee.  The press release by the formerly-named Supersonic Coffee, announcing the rebranding, seemed to suggest that it was bullied into the name change, characterizing its situation as a:

David vs. Goliath fight between a small business and a multi-billion-dollar company, where a small upstart is forced to close or change names … this time it’s happening in the specialty coffee industry.

On the other hand, Supersonic never filed an Answer to the opposition, and its own press release also explains that Supersonic hired “one of the top IP firms in the country” (which appears to be Kilpatrick Townsend & Stockton LLP, based on the attorney information in the trademark application and in the TTAB records for the opposition).

Rather than a case of bullying, perhaps this is a case where the startup applicant simply realized that it had unintentionally selected a mark that infringed on some major registered brands, and that it was unlikely to succeed in an expensive TTAB opposition proceeding.  Moreover, perhaps this case of “bullying” resulted in some mutually-beneficial rebranding to a more appealing and creative mark (at least in my opinion).  As the press release explains:

The AKA name is playful, personal, and embraces the moments when we enjoy a cup of coffee, whether it is a quick break or a meditative pause. Call it what you will, to us it is AKA Coffee.

The AKA Coffee website also explains:

Enjoying coffee is a personal affair, from the beans you brew to the cup you choose. Whether a quick break or a meditative pause, we’d like to make those moments more delicious. Call it what you will, to us it’s AKA Coffee.

Although the new AKA Coffee website is not yet operational, a preview of the rebranded AKA Coffee designs, products, and merchandise may be viewed in this news posting.  In my view, the rebranded AKA Coffee name and designs are more memorable and creative than the previous “Supersonic” name, which was based on the ambiguous tagline: “We are Supersonic. We’re on a mission to make awesome coffee that breaks barriers.”

I think the AKA Coffee rebranding is a big improvement.  What do you think?  Which brand do you like better?