As reported in USA Today, Starbucks’ new pastry may be the subject of intellectual property litigation in the United Kingdom.
Starbucks recently added a pastry item to its offerings at 730 U.K. stores. A cross between a muffin and a doughnut, the pastry is being sold under the portmanteau “Duffin.” The company’s pastry partner in the U.K., Rich Products, even registered the name “Duffin” as a trademark for “bakery goods.”
However, a pastry store owner in London says that she’s been selling a similar pastry under the same name for years. Starbucks claims that, although it conducted an extensive trademark search and found no prior use of the mark before launching the product, it has since become aware of several other versions of the “Duffin.” Fearing that Starbucks will demand that she stop using the name, the pastry store owner is considering initiating a legal action to invalidate the registration.
Meanwhile, Starbucks claims it hasn’t yet explored whether to sell the product in the United States. If it does, the company may want to choose a different name. Pontiac Coffee House, LLC of Springdale, Arkansas, has already registered the “Duffin” trademark for “donuts; doughnuts; muffin mixes; muffins” claiming use dating back to 2011.
Under U.S. trademark law, the first one to use a mark acquires superior rights in the trademark as to all subsequent users and may bring an action for trademark infringement to enforce its rights. The first user may also oppose applications to register similar marks and/or petition to cancel a third party registration. That said, if someone other than the first user of the trademark does register the mark, the first user’s rights may be limited to only those geographic areas where it has already sold goods using that trademark.
In our next blog, we’ll discuss strategies for avoiding a trademark dispute similar to the one playing out in the United Kingdom over the “Duffin.”
