Starbucks is moving away from green straws, actually any plastic straws, to live a little more green. So, we’re unlikely to see any straw trademark filings, despite decent look-for advertising.

While Starbucks appears to have drawn the short straw at the USPTO on its efforts to federally-register a pair of green dot marks, appeals to the TTAB are currently pending, here and here:

Let’s stay tuned to see whether Starbucks gets cooking at the USPTO by filing any service mark applications for its distinctive green colored aprons, can you say look-for advertising?

What do you think, does this GREENER APRON word-only mark filing move Starbucks closer?

Starbucks certainly seems to have a lot of brand equity wrapped up in the color green, so I’m left wondering why this coffee shop in San Francisco Int’l Airport chose its name and green letters?

Is it ironic that I’m writing and publishing this Starbucks post remotely on my lap top from here?

Starbucks, thanks for the great coffee, tasty blueberry muffin, and most importantly, the free wifi!

A couple of weeks back, I captured this image from a t-shirt for sale in Starbucks’ backyard — at a shop in the Pike Place Market area of Seattle:

StarbucksCannabisOne of the things it brought to mind for me is the dozen year long trademark dilution case that Starbucks lost, over and over, a few years back, against a New Hampshire coffee roaster, who lawfully continues to sell its Charbucks coffee blend of beans.

It also brings to mind the difficulty of predicting the outcome of a trademark parody defense, especially since the case Tim wrote about earlier this year, highlighting Louis Vuitton’s inability to prevail in the recent My Other Bag case.

Last, at least for now, it also brings to mind the moving target of the legality of marijuana, at least at the state level, especially recognizing that Starbucks’ backyard happens to be a safe haven for doobie lovers.

Back in the day, associating the visual identity of a famous brand owner with an illegal product, was quite helpful in proving up tarnishment type damage, remember the Enjoy Cocaine posters?

Yet, with the ever-changing environment of what is legal and where, at what point will the tarnishment argument become tainted, especially with the apparent growth of First Amendment defense successes in trademark cases?

In the end, given the utter prevalence of Coca-Cola script inspired Enjoy Cocaine t-shirts available for sale online (a substance legal in no state), is the most logical explanation for a famous brand owner’s apparent tolerance best explained by the Wack-a-Mole pest and problem?

We’ll soon see whether coffee truly goes hand in hand with closers, at least in one famous brand owner’s quest for registration of a non-verbal, non-traditional color trademark at the USPTO. I’ve been noticing Starbucks focus on green straws lately, with the door signage shown below, offering a pretty creative use of “look-for advertising” without using those clunky words:

StarbucksGreenStrawSo, my search of filings at the USPTO was expected to find at least one supporting a claim of ownership to it, but what I found instead is a brewing battle over the green dot on a white cup:

Original December 3, 2012 Drawing for U.S. App. Ser. No. 85792872
Original December 3, 2012 Drawing for U.S. App. Ser. No. 85792872
Original December 3, 2012 Specimen for U.S. App. Ser. No. 85792872
Original December 3, 2012 Specimen for U.S. App. Ser. No. 85792872

Two months ago the USPTO issued a final refusal, maintaining previously issued grounds for refusal, including “the refusals related to the specimen and drawing not matching, the failure to function refusal based on the color mark being nondistinctive, the failure to function as a mark due to nondistinctive background design, and the claims of acquired distinctiveness being insufficient are all made final.”

According to the Examining Attorney: “As an initial matter, it is important to point out that the main issue in this application is whether the mark as shown in the specimens matches the drawing. The applicant has applied for a solid green circle background carrier that is centrally placed on a white beverage cup. The dotted lines on the drawing indicate placement of the mark on an actual cup. The examining attorney’s position is that the only acceptable specimen is an actual white cup with a clearly identifiable green circle background carrier centrally placed in the center of the cup. As discussed below, the specimens submitted by the applicant do not match the drawing.”

And, she goes on: “A claim of acquired distinctiveness under Section 2(f) cannot overcome the matching issue. Nor can any amount of evidence.”

Amended Drawing on October 13, 2015, for U.S. App. Serial No. 85792872
Amended Drawing on October 13, 2015, for U.S. App. Serial No. 85792872

The refusals were maintained despite the amendment to the drawing to add dotted lines, as shown to the right, and despite the amendment to the description of goods, which now reads: “The mark consists of a green circle placed centrally on the front exterior side of a white cup shape. The colors green and white are claimed as elements of the mark. The portions of the drawing represented by dotted lines are not claimed as elements of the mark.

Will Starbucks put this cup of coffee down, not file a Request for Reconsideration by the November 18, 2015 deadline, and fail to close on this application at the USPTO, or will it attempt to best the 200 page Office Action response it filed back in February?

Or, does this new Starbucks application filed just last week provide any insight?

But, what I really want to know is when will we see a non-traditional trademark application to protect the green straw?


– Brent Carlson-Lee 

Dumb Starbucks opened in Los Angeles last week serving Dumb Frappuccinos and Wuppy Duppy Lattes. As I read the article, I scrolled back to the topic to make sure I wasn’t reading The Onion. Sure enough, I was reading the Los Angeles Times. This Dumb Starbucks was real, and Starbucks was “looking into it” according to a company spokesperson.

Clearly Dumb Starbucks wasn’t attempting to fly under the radar while profiting off the Starbucks name as evidenced by their active @DumbStarbucks twitter account. And the fact they weren’t charging customers for coffee.

So what is this all about?

It turns out it was a parody art project by Nathan Fielder who has a show “Nathan For You” on Comedy Central.

Viacom and Comedy Central issued a statement saying they “take intellectual property rights seriously, and also recognize the important constitutional protection afforded to expressive works characterized by social commentary. The episode relating to “Dumb Starbucks” constitutes protected free expression.”

Does it?