Despite the ubiquitous presence of Starbucks locations and their iconic cups, Starbucks has been fighting with the United States trademark office over registration issues for years. The issue began in July 2015 when Starbucks filed a trademark application for a mark of its white cup with a green circle in the middle.  Starbucks filed for federal trademark protection of this mark in international classes 30 and 43, which cover beverages and beverage establishments respectively.

The application, however, was rejected by the examining attorney based on the decision that the mark applied for differed in the drawing from the submitted specimen.  Similarly, the examining attorney also found issues with the specimen provided for class 43, rejecting the application because the specimen provided was illegible.

In the decision, the examining attorney stated that the specimen provided for class 30 depicted a green circle on the cup that was not solid green like the mark in use.  Instead, the mark in the application was comprised of green paint strokes that created the illusion of a round circle with ragged edges.  The attorney also noted that the varying shades of green differed from the solid, single green used in the specimen.

As for the class 43 specimen, the examining attorney simply stated that the specimen provided by Starbucks was illegible and did not clearly show the mark.  An unclear specimen example will result in automatic rejection by the examining attorney because the attorney will not be able to determine whether the mark meets the requisite standards for registration.

Although Starbucks responded by submitting a new specimen, the mark was again refused registration because the examining attorney then found that the mark did not adequately function as an indicator of the source of goods.

In response, Starbucks then amended the description of the mark under the application, but the examining attorney again refused registration, re-stating that the mark differed in drawing from the specimen.  In the refusal, the attorney noted that again that the marks in the application were much more complicated and abstract than the simpler mark used in the specimen.

Again, Starbucks appealed the decision, and currently, the appeal is suspended as the application has been remanded to the examining attorney in order to consider Starbuck’s request for reconsideration/amendment.

It is vital that major brands such as Starbucks vigorously protect their intellectual property and brand.  Trademark registration, both domestic and international, can be vital to safeguarding key marks, and meticulous care should be taken when applying for trademark registration.  Experienced trademark attorneys will not only counsel their clients on how to ensure that their applications meet registration standards, but counsel should also ensure that their clients use their mark as registered.  It is not uncommon for clients to use variations of their mark.  Unfortunately, such variations are often not protected, and as such, companies should consider consulting with experienced trademark counsel before undergoing new campaigns or product launches.

For more information on this topic, please visit our Trademark Registration & Maintenance service page, which is part of our Trademark Practice.

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm located in Dallas, TX.  The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution.  Additional information about the trademark law firm and its trademark attorneys may be found at www.klemchuk.com.

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