Background

On August 26, 2020, Starbucks filed a notice to oppose the registration of the trademark PUPPUCCINO for edible pet treats. The PUPPUCCINO trademark application belongs to an individual in New Jersey (“Applicant”), with an intent to use the mark. During prosecution, the examining attorney at the U.S. Patent and Trademark Office determined that the PUPPUCCINO mark was registrable because there were no similar pending applications or registrations. Apparently, Starbucks never attempted to register its PUPPUCCINO brand.

Golden retriever enjoying a morning PUPPUCCINO from Starbucks.
Anton Hopen’s English golden “Belle” enjoying a morning PUPPUCCINO from Starbucks.

Because of Starbucks’ inaction, the examining attorney correctly determined that the PUPPUCCINO mark is registrable. During the 1-month opposition window, Starbuck filed the notice of opposition.

Grounds for opposition

Starbucks is opposing the registration using a three-pronged approach. First, Starbucks is alleging that the PUPPUCCINO trademark application is confusingly similar to several of Starbucks’ trademarks. One of the identified Starbucks trademarks is a common law PUPPUCCINO mark, which Starbucks uses in connection with a dog treat not listed on its menus. The other marks are Starbucks’ FRAPPUCCINO marks, which Starbucks uses in connection with human beverages.

The second approach is an allegation that Starbucks’ FRAPPUCCINO marks are distinctive and famous and that Applicant’s PUPPUCCINO mark will dilute Starbucks’ FRAPPUCCINO marks. Starbucks believes that Applicant’s PUPPUCCINO mark will blur and weaken the consumers’ connections between Starbucks’ FRAPPUCCINO marks and Starbucks’ goods.

The third approach is an allegation that Applicant’s PUPPUCCINO mark falsely suggests a connection between Applicant and Starbucks.

Analysis

The case is unnecessarily difficult for Starbucks. Starbucks could have simply filed a federal trademark application and secured nationwide rights in the PUPPUCCINO mark. As a result, Applicant’s mark would have been initially refused in view of Starbucks’ registration. Moreover, Starbucks would not be opposing the PUPPUCCINO trademark filed by a third party. Instead, Starbucks is  relying on (1) common law trademark rights related to a mark that is almost entirely known by word of mouth and (2) an allegedly famous FRAPPUCCINNO mark that is used in connection with human beverages rather than pet treats. Of course, Starbucks is an 800 pound gorilla that can outspend the Applicant. I suspect that this case will settle, or the Applicant will simply forego filing a response.

Takeaway

As an Applicant, you should conduct at least a cursory internet search to determine if there are any instances in which another party is using a similar trademark in commerce. The Applicant in this case could have saved herself the costs of filing the trademark application and the stress involved with fighting Starbucks.

If you are using a trademark in commerce and believe you have the sole rights to that mark, you should file a federal trademark application to avoid a situation in which someone beats you to the U.S. Patent and Trademark Office. By taking these simple actions, you can avoid having to oppose someone else’s registration and you will have peace of mind knowing that you have exclusive rights to that trademark.