Dumb Starbucks And Parody In Trademark Cases

On Friday, February 7th, 2014, a store called "Dumb Starbucks" opened up in Los Feliz, California. Dumb Starbucks looked nearly identical to a typical Starbucks location and served coffee, frappuccinos, and lattes in cups bearing the Starbuck's logo and the phrase "Dumb Starbucks." The "Dumb Starbucks" modification to the Starbucks trademark was also displayed prominently on the storefront and on other merchandise available for sale in the Dumb Starbucks location. On February 10th, 2014, Comedy Central's "Nathan for You" show announced that it was behind the appearance of the "Dumb Starbucks" outlet in Los Feliz. Although the Los Feliz Dumb Starbucks store has since been shut down by health inspectors and may have just been a publicity stunt, owner Nathan Fielder announced that he plans to open another Dumb Starbucks in Brooklyn, NY in coming weeks.

Dumb Starbucks claims that its use of the Starbucks trademark is protected under parody defense to trademark infringement. However, unlike copyright law, parody may not be used as an affirmative defense to trademark infringement, and "Dumb Starbucks" would be unlikely to survive a trademark infringement claim.

Under the Lanham Act, a party may be liable for trademark infringement if that party uses a mark in such a way that is "likely to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § 1114. A parody is not a "defense" but instead is simply as a factor to consider in an analysis of likelihood of confusion. See Dr. Seuss Enterprises L.P. v. Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir. 1977). For example, the US Patent and Trademark recently rejected a parody defense and refused registration of the mark CRACKBERRY on the basis that it was confusing with BLACKBERRY. Research in Motion Ltd. v. Defining Presence Mktg. Group Inc., 102 USPQ2d 1187, 1194 (TTAB 2012. On the other hand, in Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007), the court concluded that Louis Vuitton failed to show any likelihood of confusion because of Haute Diggity Dog's use of the "Chewy Vuiton" mark based in large part because it was an "obvious parody."

Further, parody may not be used as part of a defense to trademark infringement where a "defendant appropriates a trademarked symbol such as a word or picture, not to parody the product or company symbolized by the trademark, but only as a prominent means to satirize and poke fun at something else in society." 5 J.T...