In a Split Decision, TTAB Finds SIREN'S BLEND for Coffee Confusable With the Starbucks Logo, But Not Confusable for Clothing

In an exhaustive and exhausting 69-page decision, the Board sustained-in-part and dismissed-in-part Starbucks' opposition to registration of the mark SIREN'S BREW, finding confusion likely with the Starbucks design logo with regard to applicant's "coffee beans," but not as to applicant's "shirts; sweat shirts." Starbucks' dilution claim failed because Starbucks did not prove its logo to be famous for dilution purposes. This blog post will attempt to hit the highlights. Starbucks Corporation v. Mountains and Mermaids, LLC, Oppositions Nos. 91250027 and 91250160 (May 8, 2023) [not precedential] (Opinion by Judge Cynthia C. Lynch).

Starbucks claimed common law rights in the mark SIREN for coffee and "associated merchandising goods," asserting five bases for priority, none of which it successfully established: (1) Current use of SIREN’S BLEND for coffee tacked onto alleged prior rights in SIREN’S NOTE BLEND for coffee; (2) Prior trade name use of Siren Retail Group, which allegedly has offered “premium coffee-related experiences” since 2016; (3) Prior alleged use of the word mark SIREN “in connection with many goods and services, including coffee-related goods and services and apparel;” (4) Prior alleged use of SIREN in “branding and promotional efforts in a manner analogous to trademark use;”and (5) alleged public association of “Siren” with Starbucks as a nickname.

Starbucks thus had to rely on its registered logo marks for its priority claim, two of the registrations covering coffee and clothing (including the mark shown in the lower right corner above). Since the involved goods overlap, the Board must presume that they travel in the same normal channels of trade to the same classes of consumers.

Starbucks claimed that its logo is famous, but it did not provide sales and advertising figures tied to that particular mark. The Board found the mark to be commercially strong for coffee-related products, but not at the farthest end of the strength spectrum. As to clothing, the Board made no such finding.

Applicant attempted to show that third-party uses of "siren" weakened the Starbucks' mark, but the Board was unimpressed: "there are only a handful of third-party uses of 'siren' in connection with coffee-related goods and services, and they appear mostly to be small, local businesses. As to clothing, however, third-party uses were entitled to some probative weight.

Turning to a comparison of the marks, the Board poured through the record and found "substantial evidence of public exposure to Opposer’s Design Logo marks associated with and characterized as a siren, and that the Design Logo often is referred to by consumers as the Siren or the Starbucks Siren."

The Board found the word SIREN'S to be dominant in applicant's mark, since it is the first word in the mark and since BREW is descriptive of coffee. The Board found the marks to be similar in connotation and commercial impression.

As to clothing, however, the meaning of BREW is "more open-ended and and subject to various interpretations, none of which are descriptive of or generic for the clothing goods." "The SIREN’S BREW mark used on clothing still gives the meaning and impression of the brew of a siren, but that brew could be a beer, tea, coffee, any other brewed beverage, or indeed any concoction of unusual ingredients." In light of the narrower scope of protection merited by the Starbucks mark for clothing, the Board found the marks dissimilar in this context.

And so, the Board found confusion likely as to applicant's coffee beans, but not as to its clothing items.

As to Starbucks' dilution claim, the evidence fell short of establishing fame by the relevant date for dilution purposes. "The record is simply too thin to establish, by a preponderance of the evidence, that Opposer’s marks were famous as of March 2018."

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TTABlogger comment: When a party has multiple registered marks, it seemingly seldom can segregate its sales and advertising figures by mark. Keep that in mind when challenging the strength of your opponent's marks.

Text Copyright John L. Welch 2023.