Starbucks’ lawyers have had their hands full, and not with steaming hot cups of coffee. The television network Comedy Central opened a Dumb Starbucks parody store in Los Angeles, complete with a green storefront sign boasting the words “Dumb Starbucks Coffee” and a Dumb Starbucks logo almost identical to the chain’s green, white, and black mermaid logo.
The coffee shop, which supposedly purchased its brew from a local grocery store and did not produce Starbucks brand coffee, gave its mockingly named products products away free of charge on opening day. The Christian Science Monitor reports that the store was pre-approved to open by Viacom’s (the parent company of Comedy Central) lawyers. Even though the Dumb Starbucks shop was shut down shortly after opening due to a lack of permits, the experiment raised some interesting questions about trademark and parody.
Operating in the Gray Area of Trademark Law
While the Viacom legal team claims that the first amendment protects the parody because it classifies as free expression, some legal experts are not so sure. According to Business Insider, Comedy Central’s use of the logo and branding could classify as an infringement upon the Starbucks trademark.
Starbucks May Argue that Parody Shop Dilutes the Brand
Trademark legislation mainly functions as a way to prevent consumer confusion. For instance, a business that decorated its stores like McDonald’s and took the name McDonald could potentially confuse customers and would probably be illegal under trademark legislation.
If the case against Dumb Starbucks went to court, the Viacom legal team could argue that consumers are so familiar with the Starbucks brand that they would most likely not confuse the Dumb Starbucks shop with the real thing.
However, in California Causes of Action, authors Stanton T. Mathews & Kevin Lancaster explain there are actually seven factors to determine trademark confusion: “(1) strength of the mark; (2) similarity between the two marks; (3) proximity of the goods; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchasers; (7) defendant’s intent in selecting his mark; and (8) likelihood of expansion of product lines.”
Starbucks’ lawyers would have likely argued that the Dumb Starbucks store qualifies under a trademark doctrine focusing on trademark dilution, which prevents businesses from utilizing trademarked material in a way that would diminish the trademark’s uniqueness.
California Causes of Action from Attorney Authors Stanton T. Mathews & Kevin Lancaster
Stanton T. Mathews is the head of Stanton T. Mathews and Associates, a law corporation located in Laguna Hills, California. Mr. Mathews was admitted to practice in California in 1981 and to the U.S. Court of Appeals, 9th and 10th Circuits, and U.S. District Courts in California and Colorado in 1982. He is a member of the State bar of California, American Trial lawyers Association, Consumer Attorneys of California, Orange County Trial Lawyers Association, Orange County College of Trial Advocacy, Western Trial Lawyers Association and Orange County Bar Association.
Kevin Lancaster is a member of The Veen Firm, P.C. San Francisco. He practices in the areas of catastrophic industrial injury, premises liability, professional negligence, products liability and medical malpractice.
Mr. Lancaster was graduated from the University of San Francisco School of Law (cum laude). He received his M.A. from the University of California, Santa Barbara and his B.A. from Northeastern University in Boston, MA. He is a member of the San Francisco, California and American Bar Associations, Consumer Attorneys of California, American and San Francisco Trial Lawyers Associations and Barristers Club of San Francisco. He also is a Recipient of American Juris Prudence Award, Excellence in Torts.