A Recipe for Successful Trademark Litigation
coffee companies in the world gets into
a trademark battle. But that is what
happened last year when Starbucks, Inc.,
released a unicorn-themed Frappuccino
"unicorn craze." As with most things
publicity. The public's reaction to the
drink was mixed some were enthused
by the drink's bright colors and fanciful
flavoring; while others, including some
famous actresses and artists, expressed
their "complete disgust" with the drink.
One small café in New York was
particularly distraught about Starbucks'
new offering. The End, which is owned by
the Montauk Juice Company, sells healthy
organic drinks and juices at its store in
Brooklyn. The End had recently created
a drink called the Unicorn Latte
ingredients, such as cold-pressed ginger,
lemon juice, dates, cashews, maca root,
blue-green algae and vanilla bean. The
End's product also featured no cow's milk,
so the use of the term "latte" appeared to
be a spoof of an actual latte.
The End's Unicorn Latte received
increasing publicity for its unique colors
and health benefits, being featured in
various local and national news outlets,
including The New York Times. After
initial fanfare in late 2016 and early 2017,
The End's owners decided to register the
mark "UNICORN LATTE" with the U.S.
Patent and Trademark Office (Serial No.
87308906).
A few months later, Starbucks released
its unicorn-themed drink. This limited
Frappuccino release had a distinct blue
and pink color scheme with a sparkle top,
similar to the Unicorn Latte. However, the
Unicorn Frappuccino was cream-based
and contained mango syrup, sugar and
classic syrup. The drink was then topped
with whipped cream and "dusted" with a
comparison shows some of the similarities:
registered mark in hand, The End issued
a cease and desist letter to Starbucks for
its allegedly infringing use of the term
"unicorn" to describe its Frappuccino
drink. Although the products were
different, the complaint alleged that
"the size of and scope of Starbucks'
product launch was designed so that the
Unicorn Frappuccino would eclipse the
Unicorn Latte in the market, thereby
harming plaintiffs and confusing their
customers." The complaint also noted
that customers started to ask The End to
create Unicorn Frappuccinos for them,
while online publications and customers
furthered ongoing confusion by referring to
Starbucks' product as a Unicorn Latte.
Starbucks failed to comply with the
cease and desist letter. So, The End filed
a lawsuit in the U.S. District Court for the
Eastern District of New York on May 3,
2017.
sought relief not only for trademark
infringement, dilution and false designation
of origin under the Lanham Act, but also
brought claims of unfair business practices,
as well as common law trademark and state
law claims. The End cited to its registered
mark, and also to Starbucks' failure to
mitigate the confusion through its marketing.
associates at Dillingham & Murphy, LLP.
Michael's general practice focuses on branding,
employment and business litigation. He also
advises clients on how to build and maintain their
valuable intellectual property portfolios and assists
with enforcing his clients' rights when necessary.
Anna's practice involves general litigation
defense in various industries, including healthcare
and professional sports. Anna provides legal
counseling in matters concerning employment
law and securities litigation. Anna also counsels
start-ups and small businesses, helping them
to formulate specific legal plans for their
transactional needs.
601 Montgomery Street, Suite 1900
San Francisco, California 94111
mhh@dillinghammurphy.com
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