Is "Dumb Starbucks" Free Speech or Just a Dumb Ploy Inviting a Lawsuit?

A new coffee shop has opened in Los Feliz, Los Angeles, titling itself "Dumb Starbucks."  The mock coffee shop utilizes a virtually identical logo to Starbucks' logo on all its products and signage, but places the word "Dumb" before everything.

According to news reports, the owners are claiming that their coffee shop is some kind of "pop art" installation intended to mock the massive Starbucks corporation.  They apparently claim that they are shielded from liability for trademark infringement or dilution by the First Amendment, and that their lawyers are fully in control of the situation.

Notably, the news reports also claim that their coffee is not for sale, but is handed out free of charge, which would tend be garner some sympathy for the argument that the whole excursion is a non-commercial artistic endeavor. However, the "FAQ" disclosed by the owners seems to suggest that the coffee is very much for sale.  It states, in relevant part:

"Although we are a fully functioning coffee shop, for legal reasons Dumb Starbucks needs to be categorized as a work of parody art. So, in the eyes of the law, our "coffee shop" is actually an art gallery and the "coffee" you're buying is actually the art. But that's for our lawyers to worry about. All you need to do is enjoy our delicious coffee!"

But what does that matter?  Under the federal Lanham Act, there is a requirement that the unauthorized use be "in commerce" to be considered an infringement. The Federal Trademark Dilution Act does not expressly contain such a commercial use requirement, but it would certainly be relevant to a court's consideration if the whole stunt has no commercial element.

Rather, here, it would appear the entire endeavor is a publicity stunt essentially inviting the Starbucks' chain to file a lawsuit. Even if Starbucks won, it might lose in the court of public opinion, for looking like it has no sense of humor. So the owners may be taking an expensive gamble.

That being said, Starbucks Corporation is inevitably going to be forced to sue this particular coffee shop, and the odds are that it will likely prevail in shutting it down in very short order. Perhaps that is the reason that news reports that there is a several hour wait to enter the shop.

Trader Joe's Lawsuit Against "Pirate Joe's" Thrown Out of U.S. Court

In August, we reported on the federal trademark infringement lawsuit that had been filed by Trader Joe's against a Vancouver-based retailer named "Pirate Joe's."

The District Court has now ruled that Trader Joe's did not sufficiently allege how commercial activities arising out of consumer confusion in Canada is harming Trader Joe's in U.S. commerce. Consequently, the Court dismissed Trader Joe's federal claims with prejudice.

"Here, all alleged infringement takes place in Canada and Trader Joe's cannot show economic harm," ruled the Court.  "Even if Canadian consumers are confused and believe they are shopping at a Trader Joe's or an approved affiliate when shopping at Pirate Joe's, there is no economic harm to Trader Joe's because the products were purchased at Trader Joe's at retail price."

Trader Joe's now faces a legal conundrum  -- since it has no stores and does not own a trademark in Canada, it is not clear that it can file a trademark lawsuit there against Pirate Joe's.

Additionally, since all the goods that Pirate Joe's sells are genuine and purchased at full price, as the District Court noted, the adverse ruling might lead the Canadian court to agree, and similarly rule that Trader Joe's suffers no harm there either.

Maybe Trader Joe's should just offer Pirate Joe's a distribution agreement?  Just a thought.

The "Caviar Manicure": Capturing a Trend as a Trademark

Buzzfeed reports that UK-based company Ciaté is laying a somewhat controversial stake to the terms "CAVIAR MANICURE" and "CAVIAR NAILS," as used in connection with a unique (if not slightly bizarre) form of nail polish and lip gloss adornment.

According to the company's website, "the inspiration behind the Caviar Manicure™ came about when Charlotte, Ciaté’s Creative Director, was looking to create 3-dimensional nails for a front cover magazine shoot and wanted to develop something feminine, indulgent yet delicately extravagant."

Ciate's products are currently offered for sale at Sephora and on Amazon.

According to BuzzFeed, Ciaté has apparently been sending out cease and desist letters to bloggers who were reporting how to create a "do-it-yourself" form of the nail look and calling it the "caviar manicure" without authorization from Ciaté.

The correspondence reportedly demands that bloggers cease using the term in connection with do-it-yourself forms of nail adornment, unless they are specifically using Ciaté products:  

"Brand Agency Limited (Ciaté) owns the trade marks caviar manicure and caviar nails and we are in the process of applying to register these marks around the world. Therefore you should not use the trade marks caviar manicure and/or caviar nails unless they are used in relation to products or to a method of using products that are produced by Ciaté."

However, the legal correspondence has not gone over so well with nail polish aficionados, who have begun calling the trend "fish egg manicure" in a form of mockery.

We have previously discussed how do-it-yourself forms of knocking off established brands without any form of commercial exploitation is (for better or worse) legal within the United States.

However, the twist here is that the bloggers and do-it-yourselfers are using a term ("caviar manicure") to which Ciaté is now staking an exclusive legal claim.

In the U.S. Trademark Office, Ciaté applied for a federally registered trademark in April 2012 based on priority of use claimed from its UK-application, which is dated March 13, 2012.

If a blogger or any other third party had previously used this term in commerce, that person could possess a superior right to Ciaté under the doctrine of priority.  In the United States, the first person or company to use a distinctive mark in commerce typically possesses the seniormost claim to right as against later comers.

There are reports in the blogosphere that third parties may possess evidence of prior use. However, do-it-yourselfers and bloggers may not possess any trademark rights vis-a-vis Ciaté, unless their use was made in commerce.

Ciaté may therefore now attempt to lay stake to the brand to the extent it can stop a significant level of unauthorized usage in the marketplace and become uniquely associated with the trend.