Friday, August 1, 2014

How Do We Make Risk Analysis for Trademark?

Dear Rich: We are a new juice company in California and we've been considering various names. One name we've considered is a three-letter word. We searched the USPTO records and found a few similar uses in related classes but we were most concerned by the fact that Starbucks had a registration for the exact same name preceded by the word Starbucks. We didn't believe anyone would confuse our products with that of the Starbucks drinks and their use of the word "Starbucks" would also prevent confusion but we were concerned because they were a big company. How do you analyze the risk when choosing a trademark like this? You were correct in your concerns. Starbucks, like many branded services, is aggressive in protecting its marks (although it is also reasonable in its pursuits). The size and aggressiveness of the trademark owner is one of many factors in a risk analysis. Other important factors are the similarity of the marks and the similarity of the goods and services. As for the latter, Starbucks has three registrations for the mark in question and one of them is in your class (032) for "non-alcoholic drinks; soft drinks; energy drinks; fruit drinks and fruit juices; fruit drinks and soft drinks containing fruit juices ..." Although the house mark "Starbucks" precedes the term, the primary element of the mark is identical. We don't know whether you would prevail at the USPTO or in a court battle, but we assume that's not the risk you are concerned about ... it's about being dragged into a dispute with a major corporation at a time when you're launching your brand. Considering that, we think you made the right decision.

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