Starbucks Corp. v. Mountains & Mermaids, LLC

• Docket Number: 91250027,91250160[1]
• Decision Date: 08 May 2023
• Parties: Starbucks Corporation v. Mountains and Mermaids, LLC
• Court: Trademark Trial and Appeal Board

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Starbucks Corporation v. Mountains and Mermaids, LLC

Nos. 91250027, 91250160^[1]

United States Patent and Trademark Office, Trademark Trial and Appeal Board

May 8, 2023

This Opinion is Not a Precedent of the TTAB

Hearing: January 31, 2023

Anessa Owen Kramer, Mary A. Hyde, Ka'Nea Brooks and Amanda Blackburn of Honigman LLP for Starbucks Corporation

Olivia Muller and Erik M. Pelton of Erik M. Pelton &Associates PLLC for Mountains and Mermaids, LLC

Before Wellington, Lynch and Dunn, Administrative Trademark Judges.

OPINION

Lynch Administrative Trademark Judge:

I. Background and Opposer's Motion

In two applications, Mountains and Mermaids, LLC ("Applicant") seeks registration on the Principal Register of the standard-character mark SIREN'S BREW for "shirts; sweat shirts" in International Class 25^[2] and "coffee beans; ground coffee beans" in International Class 30.^[3] Applicant disclaimed BREW in the latter application.

In its Notices of Opposition, Starbucks Corporation ("Opposer") opposes registration of Applicant's mark on two grounds. First, Opposers allege likelihood of confusion under Section 2(d) of the Trademark Act ("the Act"), 15 U.S.C. § 1052(d), with Opposer's alleged common law use of SIREN in connection with "coffee and coffee-related goods and services, as well as the associated merchandising goods,"^[4]and with numerous registered design and composite marks,^[5] including:

(Image Omitted)

for goods that include coffee in International Class 30;^[6]

(Image Omitted)

for goods that include ground and whole bean coffee in International Class 30;

(Image Omitted)

for a variety of goods and services, including t-shirts, polo shirts and sweatshirts in International Class 25 and ground and whole-bean coffee and in International Class 30;^[7] and

(Image Omitted)

for a variety of goods and services, including t-shirts, polo shirts and sweatshirts in International Class 25, and ground and whole-bean coffee in International Class 30.^[8]

Second Opposer alleges dilution by blurring of its pleaded registered marks under Section 43(c) of the Act, 15 U.S.C. 1093(c).

As Opposer does, we focus particularly on the last two registrations listed above, as they contain the most relevant marks for purposes of challenging the subject applications on both grounds, and the most relevant goods for purposes of the likelihood of confusion claim. See In re Max Capital Grp. Ltd., 93 U.S.P.Q.2d 1243, 1245 (TTAB 2010). If we would not rule for Opposer based on these registrations, we would not rule for Opposer based on the other registrations. We refer in this decision to the image in these marks as Opposer's "Design Logo," for ease of reference.

In its Answers, Applicant denied the salient allegations in the Notices of Opposition.^[9] Applicant also included assertions under the heading "Affirmative Defenses and Amplifications," but they are not true affirmative defenses, and we do not treat them as such. The Mars Generation, Inc. v. Carson, 2021 U.S.P.Q.2d 1057, at *4 (TTAB 2021); DeVivo v. Ortiz, 2020 U.S.P.Q.2d 10153, at *1 (TTAB 2020). Regardless, Applicant did not pursue any purported affirmative defenses at trial. We therefore also consider any affirmative defenses waived. See Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 U.S.P.Q.2d 1750, 1753 n.6 (TTAB 2013), aff'd, 565 Fed.Appx. 900 (Fed. Cir. 2014) (mem.); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 801.01 (2022) ("If a party fails to reference a pleaded claim or affirmative defense in its brief, the Board will deem the claim or affirmative defense to have been waived").

The record includes the pleadings and, pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the files of the opposed applications. Both parties supplemented the record with documents filed under notices of reliance, as well as testimony with exhibits. As testimony, Opposer introduced a declaration from its Brand Manager/Group Director, Destiny Linayao, and discovery deposition testimony (Rule 30(b)(6))^[10] from Applicant's co-owners, Jeffrey Hamilton (Sarah Hamilton and Monica Hamilton. Applicant submitted a declaration from Monica Hamilton and discovery deposition testimony (Rule 30(b)(6)) from Destiny Linayao.

The consolidated proceeding has been fully briefed, and neither party lodged or preserved objections in briefing the case. Applicant explicitly concurred with Opposer's recitation of the contents of the evidentiary record.^[11] An oral hearing occurred on January 31, 2023.

Following the Board's request at the hearing that Opposer review its confidentiality designations of evidence and submit public versions if appropriate, Opposer moved to submit public versions of certain evidence previously designated confidential.^[12] We grant the motion and accept the public versions of these previously submitted evidentiary submissions.

II. Statutory Entitlement to Oppose

To establish statutory entitlement to oppose under Section 13 of the Act, 15 U.S.C. § 1063, Opposer must demonstrate a real interest in the proceeding and a reasonable belief of damage. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 U.S.P.Q.2d 10837 at *3 (Fed. Cir. 2020); see also Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 U.S.P.Q.2d 1058, 1062 (Fed. Cir. 2014); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 U.S.P.Q.2d 1713, 1727 (Fed. Cir. 2012).

Opposer attached to the Notices of Opposition USPTO database records for its pleaded registrations.^[13] Opposer's ownership of the pleaded registrations, for which status and title are established through the records, support its plausible likelihood of confusion claim against the involved applications, thereby showing its real interest in this proceeding, and a reasonable basis for its belief of damage. Opposer has established a statutory entitlement to oppose.^[14] See Coach Servs., 101 U.S.P.Q.2d at 1727-28; Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 U.S.P.Q.2d 1842, 1844 (Fed. Cir. 2000). "Where a plaintiff has proven entitlement to a statutory cause of action as to at least one properly pleaded ground, it has established [statutory entitlement to a cause of action] for any other legally sufficient ground." See Int'l Dairy Foods Ass'n v. Interprofession du Gruyere, 2020 U.S.P.Q.2d 10892, at *9 (TTAB 2020).

III. Priority and Likelihood of Confusion

To prevail on the likelihood of confusion ground under Section 2(d) of the Act, Opposer bears the burden to prove by a preponderance of the evidence both priority of use and likelihood of confusion. Cunningham v. Laser Golf Corp., 55 U.S.P.Q.2d at 1848; Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 U.S.P.Q.2d 1303, 1305 (Fed. Cir. 2002) ("The burden of proof rests with the [plaintiff] ... to produce sufficient evidence to support the ultimate conclusion of [priority of use] and likelihood of confusion."). The determination under Section 2(d) involves an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E.I. DuPont de Nemours &Co., 476 F.2d 1357, 177 U.S.P.Q. 563, 567 (CCPA 1973) (setting forth factors to be considered, hereinafter referred to as "DuPont factors"); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 U.S.P.Q.2d 1201, 1203 (Fed. Cir. 2003). A likelihood of confusion analysis often focuses on the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 U.S.P.Q. 24, 29 (CCPA 1976) ("The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.").

A. Priority

1. Applicant's Priority Dates

Applicant's Class 25 application contains a March 2018 date of first use in commerce, and its declaration testimony similarly claims that Applicant undertook use of its mark on clothing in March 2018.^[15] This serves as Applicant's priority date for its identified clothing goods. Applicant's Class 30 application, filed November 21, 2018, is based on intent-to-use, and Applicant's testimony asserts that it undertook use of its mark on coffee beans and ground coffee in May 2019.^[16] Applicant's November 21, 2018 filing date serves as its priority date for its identified coffee goods. See Executive Coach Builders, Inc. v. SPV Coach Co., Inc., 123 U.S.P.Q.2d 1175, 1180 (TTAB 2017) (citing Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 U.S.P.Q.2d 1112, 1119 (TTAB 2009).

2. Registrations

Because Opposer has made its registrations of record, which Applicant has not counterclaimed to cancel, priority is not an issue as to the marks and goods and services covered by the registrations. See Top Tobacco LP v. N. Atl. Op. Co., 101 U.S.P.Q.2d 1163, 1169 (TTAB 2011) (citing King Candy, Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 82 U.S.P.Q. 108 (CCPA 1974)); see also Massey Junior Coll., Inc. v. Fashion Inst. of Tech., 492 F.2d 1399, 181 U.S.P.Q. 272, 275 n.6 (CCPA 1974) ("prior use need not be shown by a plaintiff relying on a registered mark unless the defendant counterclaims for cancellation"); Itel Corp. v. Ainslie, 8 U.S.P.Q.2d 1168, 1169 (TTAB 1988) ("because of the existence of opposer's valid and subsisting registration, it need not prove prior use as to the services recited therein").

3. Common Law

To the extent Opposer relies on alleged common law rights, it must prove that, vis-a-vis Applicant, Opposer owns proprietary rights in "a mark or trade name previously used in the United States . . . and not abandoned ...." Threshold.TV, Inc. v. Metronome Enters., Inc., 96 U.S.P.Q.2d 1031, 1036-37 (TTAB 2010) (citing Otto Roth &Co. v. Universal...