This is not a copy of a coffee shop, just a parody. That sells coffee.

By Dave Johnson

Dumb Starbucks Menu Board

Over the weekend, a parody coffee shop called “Dumb Starbucks” opened in an affluent suburb of Los Angeles. Dumb Starbucks closely imitates the interior design elements of the average Starbucks coffee shop; uses a nearly identical logo (the only change is the compression of the word “Starbucks” to allow room for the word “Dumb”), identical fonts and colors; and sells coffee. Dumb Starbucks is also found in a strip mall, much like many Starbucks locations. Photos of the storefront and interior signage can be found on Dumb Starbuck’s Twitter feed (@dumbstarbucks). The menu is very similar to that of Starbucks, except with the word “Dumb” before every menu item. Interestingly, Dumb Starbucks appears to be giving its coffee away for free, but purports to sell the coffee. Rachel Zarrell & Ashley Perez, Peope Are Waiting For Hours to Visit a “Dumb Starbucks” Coffee Shop in California, BUZZFEED (Feb. 9, 2014, 5:30 PM), http://www.buzzfeed.com/rachelzarrell/a-dumb-starbucks-coffee-shop-is-the-newest-craze-in-californ. Several news articles have also posted a picture of Dumb Starbucks’ FAQ, in which the restaurant makes clear that it is “not affiliated in any way with Starbucks Corporation” and that they are “simply using their name and logo for marketing purposes,” claiming the fair use defense of parody. See ‘Dumb Starbucks’ Mystery: Who’s Behind the Faux Coffee Front in Los Feliz?, SCPR (Feb. 9, 2014, 11:55 AM), http://www.scpr.org/news/2014/02/09/42085/dumb-starbucks-coffee-shop-opens-in-los-feliz/. The company asserts that “[b]y adding the word ‘dumb,’ [they] are technically ‘making fun’ of Starbucks,” allowing them fair use of the trademarks as a work parody art. The company argues that the storefront is their gallery featuring their coffee art.

Certainly, the creators of Dumb Starbucks have an interesting experiment on their hands. The Starbucks name and the mermaid logo are registered trademarks of Starbucks Corporation for numerous classes of goods and services. As such, Starbucks has an obligation to enforce their rights to the marks. The question is whether Dumb Starbucks can actually claim the defense of fair use by parody that they promote in their FAQs. First, Starbucks must proven infringement of their marks. The relevant test is “likelihood of confusion” under sections 32 and 43(a) of the Lanham Act, which can be established with a showing of the probability (actual confusion not required) that consumers will be confused, demonstrated by applying one of the multi-factor analyses, such as the Polaroid factors. These factors include: (1) the strength of the senior user’s mark; (2) the degree of similarity between the marks; (3) “the proximity of the products”; (4) “the likelihood that the prior owner will bridge the gap”; (5) “actual confusion”; (6) the junior user’s “good faith in adopting its own mark”; (7) “the quality of the [junior user]’s products”; and (8) “the sophistication of buyers.” Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961). Absent consumer confusion, there is no cause of action. It is interesting to note that Starbucks spokesperson Megan Adams, in reply to questions about the parody store, stated, “It’s obviously not a Starbuck.” See ‘Dumb Starbucks’ Mystery, supra (internal quotation marks omitted). Running through the Polaroid factors shows that Starbucks may have a strong case for likelihood of confusion: the Starbucks mark is a strong mark; the Dumb Starbucks marks are nearly identical (differentiated only by the addition of the adjective “Dumb”); the products are identical; there is no gap for Starbucks to bridge between the goods offered for sale; and, Dumb Starbucks has a stated bad faith in using the marks (“We are simply using their name and logo for marketing purposes.”). However, actual confusion might be a toss-up and, for better or worse for Starbucks, coffee drinkers are rather particular consumers with strong preferences for their cup of joe.

Arguendo, let’s assume there is actual confusion and a court could find a likelihood of confusion. A bleary-eyed caffeine addict might drive down the road and see the familiar green circle housing the mermaid queen of Sumatran roast and venture into the store without thinking further. While in the store, the consumer might recognize that the menu labels all the beverages as “Dumb,” but, since it serves coffee and she is already in the store, may proceed to purchase anyway. With a finding of likelihood of confusion, Dumb Starbucks has to rely on their parody defense. As the authors of McCarthy on Trademarks and Unfair Competition note, “the cry of ‘parody!’ does not magically fend off otherwise legitimate claims of trademark infringement or dilution. … A non-infringing parody is merely amusing, not confusing.” 6 MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION § 31:153 (4th ed.). Parody does not operate as a pure defense to trademark infringement, but prevents the finding of a likelihood of confusion; that is, with an effective parody, a reasonable consumer will understand that there is no affiliation between the owners of senior mark and the parodying mark.

That raises the question of if Dumb Starbucks is more like the advertisements for Michelob Oily from Anheuser-Busch, Inc. v. Balducci Publications, 28 F.3d 769 (8th Cir. 1995) or Chewy Vuiton dog toys, Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007). In Balducci, an advertisement mimicking Michelob beer advertisements was used to parody a Shell oil spill in a source of Anheuser-Busch’s water supply, which the Eighth Circuit found had taken insufficient steps to insure that “viewers adequately understood this was an unauthorized editorial.” 28 F.3d at 777. That court did not permit the infringing use of the Anheuser-Busch’s trademarks despite the claimed parody. Similarly, in Hard Rock Cafe Licensing Corp. v. Pacific Graphics, Inc., 776 F. Supp. 1454 (W.D. Wash. 1991), the court disallowed the use of the “Hard Rain” logo mark, which was similar to the Hard Rock Cafe logo mark, stating that “[a] defendant’s claim of parody will be disregarded where the purpose of the similarity is to capitalize on a famous mark’s popularity for the defendant’s own commercial use.” Id. at 1462 (internal citation omitted). These cases point to a finding that Dumb Starbucks, which closely imitates the Starbucks marks and does so for the purpose of their own commercial gain, while only disclaiming affiliation in their FAQ, should be enjoined from using the Starbucks marks despite their parody claim.

On the other hand, Haute Diggity Dog involved the imitation of the luxury brand Louis Vuitton’s trademarks on chew toys for pets, which was found to be successful parodies. 507 F.3d at 256-57. Dumb Starbucks’ FAQ makes clear that it is not affiliated with Starbucks. In the way that Louis Vuitton likely would not make cheap rubber imitations of its luxury goods, Starbucks would not open a restaurant calling the parent company “dumb.” Similarly to Balducci, though, the marks being used are nearly identical (at least on first impression) and, as pointed out with our caffeine addict above, actual confusion probably can occur. It would have been interesting to see how a parody claim might have played out in The North Face Apparel Corp. v. Williams Pharmacy, Inc., No. 4:09CV2029RWS, 2010 WL 546318 (E.D. Mo. Feb. 9, 2010), a case in which The North Face obtained a permanent injunction against the sale of apparel bearing the confusingly similar mark “The South Butt,” but that case never made it to trial.

Another thing is certain: Starbucks will have to respond one way or another to protect their trademarks. The situation with Dumb Starbucks is highly similar to the Hard Rock Cafe case. While a consumer may be able to determine that the parody restaurant is not affiliated with Starbucks, the stated purpose is to capitalize on Starbucks’ popularity. Since no single Polaroid factor is determinative, and given the bad faith of Dumb Starbucks, Starbucks should be able to prevail in protecting their marks. Allowing Dumb Starbucks to coexist in the same industry as Starbucks would set a bad precedent by allowing undesirable free riding.

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1 Comment

  1. Well said, straight to the point. Thanks a bunch.

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