As reported by the Los Angeles Times, a new coffee shop recently opened under the name “DUMB STARBUCKS COFFEE” in a Los Angeles neighborhood. The store, which has since closed, utilized the distinctive trademarks, logos and colors made famous by Starbucks Corporation (“Starbucks”), which has more than 20,000 stores in 63 countries. The “DUMB STARBUCKS” store was very similar to an authentic “STARBUCKS”, except that the word “dumb” preceded nearly every use of “STARBUCKS” and the title of nearly every menu item.
A “frequently asked questions” flyer available at the store indicated that “DUMB STARBUCKS” is a “parody” store. It stated: “We are simply using their name and logo for marketing purposes. By adding the word ‘dumb’ we are technically ‘making fun’ of Starbucks, which allows us to use their trademarks under a law known as ‘fair use.'”
It turns out that “DUMB STARBUCKS” was actually a publicity stunt staged by comedian Nathan Fielder, star of the Comedy Central television show “Nathan For You,” which stages public hoaxes. But would the stated justification for use of the “STARBUCKS” trademarks, namely, as a “parody,” hold up under applicable trademark laws?
Claiming parody is in essence an argument that there would be no likelihood of confusion, and hence no trademark infringement, because consumers would realize that the unauthorized use is a joke (i.e., that an entity separate from the trademark owner is making fun of the trademark or its owner). Central to the applicability of parody is whether there is a clear distinction in the minds of consumers between the source of the parody and the source of the target (i.e., it would need to be clear to consumers that “DUMB STARBUCKS” is not associated with the real chain in any way). In addition, a claim of parody is generally not viable when one intends to capitalize on a third party’s trademarks for commercial gain.
In this case, the coffee being served by “DUMB STARBUCKS” was free, but the publicity gained from unauthorized use of the “STARBUCKS” trademarks was likely worth millions. It is also not clear that enough was done to ensure that consumers would not be confused as to source. Given the similar logos, colors and décor, consumers might have believed that “DUMB STARBUCKS” was either authentic or in some way related to the real “STARBUCKS.” Moreover, even if “DUMB STARBUCKS” could have escaped a claim of trademark infringement, it would likely have had exposure on a trademark dilution claim (i.e., that unauthorized use of the famous “STARBUCKS” trademarks dilutes their distinctive nature and causes them to be weaker and/or less unique).
Interestingly, while Starbucks issued a statement indicating that “DUMB STARBUCKS” could not use its trademarks, it stopped short of threatening immediate litigation. One wonders whether Starbucks had knowledge of the short-lived nature of this publicity stunt and chose to accept the free publicity for its brand instead of potential negative publicity from aggressive enforcement by its intellectual property attorneys.
