IP Law Daily, TRADEMARK NEWS: Starbucks is suing coffee seller Mountains and Mermaids for trademark infringement, (May 13, 2024)

By Thomas K. Lauletta, J.D.

The USPTO previously refused to register Mountains and Mermaids “Siren’s Brew” mark, citing likelihood of confusion with Starbucks’ Siren Design mark.

Based in part on the USPTO’s prior refusal to register defendant Mountains and Mermaids’ “Siren Brew” mark, Starbucks filed a complaint seeking to permanently enjoin the defendant from using Siren’s Brew mark on its coffee beans and ground coffee beans. Alternatively, Starbucks asks the federal district court in New York City to determine independently that the defendant’s Siren Brew mark creates a likelihood of confusion with Starbucks’ registered marks (Starbucks Corp. v. Mountains and Mermaids, LLC, No. 1:24-cv-03634-RA (S.D.N.Y. May 10, 2024)).

Plaintiff Starbucks has been in business for over 50 years and is widely known for its coffee beverages and coffee beans ground beans sold at nearly 17,000 locations. Since 2014, it has held a registration for its widely recognized “Siren” design marks.

Mountains and Mermaids (the “defendant”) sells “Sirens Brew” coffee beans and ground coffee. It first used its “Sirens Brew” trademark in 2018. In December 2018, the defendant filed an application with the USPTO to register its Sirens Brew mark. Starbucks opposed the defendant’s registration at the Trademark Trial and Appeal Board. Sustaining Starbucks’ opposition, the Board ruled that Starbucks’ Siren Design Logo marks had priority over the defendant’s marks, and concluded that the defendant’s use of its marks would likely cause confusion with Starbucks’ registered marks. The defendant never appealed the Board’s decision, and its trademark application was deemed to have been abandoned.

Following the Board’s ruling, Starbucks requested that the defendant cease using its Siren’s Brew mark in connection with its sales of coffee beans and ground coffee beans. The defendant ignored this request and continued to use its mark to promote, advertise, and sell its coffee bean products. Starbucks’ complaint for trademark infringement asks the district court to apply the Board’s finding of a likelihood of confusion and grant permanent injunctive relief to Starbucks precluding the defendant from utilizing the Siren’s Brew Mark to promote and sell its coffee beans and ground coffee beans. Alternatively, the complaint asks the court to determine independently of the Board’s findings that the defendant’s use of the Siren’s Brew Mark creates a likelihood of confusion with the Starbucks Siren Design Logo Marks and grant permanent injunctive relief to preclude the defendant from utilizing its Siren’s Brew marks.

Starbucks states that as a result of the long-standing and widespread promotion of its Starbucks Siren Design Logo Marks, the consuming public has come to recognize the Starbucks logo as a “siren,” and to associate that symbol with Starbucks, its products, and goodwill. However, the defendant’s continued use of its Siren’s Brew mark to sell coffee products is likely to confuse consumers into believing that the defendant’s products are affiliated or sponsored by Starbucks. Additionally, because Starbucks cannot control the product quality or conditions of sale of the defendant’s products, the defendant’s continued use of its Siren’s Brew mark will diminish the ability of Starbucks’ Siren Design Logo marks to serve as a distinctive source identifier for Starbuck products.

Alleging that monetary damages would not fully compensate Starbucks for its injuries, Starbucks asks the district court to enjoin the defendant from using its Siren’s Brew mark, or any mark or symbol that is similar to the Starbucks Siren Design Logo mark, in connection with the defendant’s coffee product sales. Starbucks further asks that the defendant be ordered to pay reasonable attorneys\ fees and costs incurred by Starbucks pursuant to 15 U.S.C. § 1117(a).

The Case is No. 1:24-cv-03634-RA.

Judge: Abrams, R.

Attorneys: Anthony John Davis (Santomassimo Davis LLP) for Starbucks Corp.

Companies: Starbucks Corp.; Mountains and Mermaids LLC

News: Trademark NewYorkNews