In a 52-page opinion, the Board reversed a refusal to register the mark shown below right, comprising a green circle on a white cup, for coffee, tea, and restaurant services, finding that the application drawing is a substantially exact representation of the mark as used on Starbuck’s specimens of use. However, the mark shown below, comprising a green circle alone, for the same goods and services did not fare as well. The Board upheld the refusal to register that mark on the ground that Starbucks failed to prove the acquired distinctiveness that it claimed. In re Starbucks Corporation, Serial Nos. 85792872 (left) and 86689423 (right) (January 17, 2019) [not precedential] (Opinion by Judge Michael B. Adlin).

Green Circle on White Cup: The Board rejected the Examining Attorney’s contention that the drawing (above right) was not an exact representation of the mark in use, as required by Rule 2.51(a). As to the class 30 goods, the cup in the drawing has “the same shape as and appears identical to the cup in the specimen.” (see specimen below). The “fluid paintbrush strokes” do not change the essence of the mark, nor does the differing shades of green on the specimen.

As to the specimen of use for the Class 43 services (below), the minor additional details in the specimen do not create a different commercial impression from the mark shown in the drawing. Nor does the fact that the specimen shows the cup in perspective change the commercial impression.

And so the Board reversed the refusal to register the white-cup-with-green-circle mark. [Starbucks’ Section 2(f) claim based on five years of continuous and substantially exclusive use was not challenged].

Green Circle Alone: Starbucks also sought registration of this mark under Section 2(f) (thereby conceding that the mark is not inherently distinctive), but this time the USPTO challenged that claim. The Board found that although Strabucks’ sales and advertising evidence was staggering, the extent to which that evidence related to the green circle design rather than Starbucks’ “siren design” (shown below) was unclear. Likewise, media references did not clearly refer to the green circle mark at issue. The Board found that the green circle does not create a “separate and distinct commercial impression” from the siren design. In fact, the background to the siren is not even mostly green and is not a circle. The green circle mark is not a “minor” alteration of the siren design that Starbucks uses. Thus the data regarding the siren design was not relevant anyway.

Starbucks submitted the results of a survey purporting to show that the green circle mark had acquired distinctiveness, but the Board found that, although the survey had some probative value, “it also has problems, and raises a number of questions.”

Dr. Kaplan used an inappropriate control, selected an underinclusive universe and designed a survey and questions (and provided a data set) that do not reliably establish an association between the mark in question and Applicant.

Dr. Kaplan’ choice for a control was the cup shown below, which he referred to as “generic.” The Board found his control to be a major concern: “It would have been more logical, and reliable, for the ‘control’ cell to be shown a cup more analogous to Applicant’s mark. For example, the control cup would have been more effective if it was beige (or even white) and featured, for example, a blue triangle placed centrally on the front exterior side.”

Moreover, many of the survey responses were ambiguous as to why the respondent named Starbucks when shown the applied-for mark on a cup. In addition, the dataset provided by Dr. Kaplan was not clearly segregated between different test groups. And, the Board concluded, Dr. Kaplan chose a universe that was too narrow: first, since the survey was conducted via the Internet, it did not include the 15% of consumers who do not use the Internet; and second, he also excluded participants who access the Internet by phone.

The Board noted that the result might have been different if the survey and other evidence “were more specifically targeted to assessing the mark in the ’872 Application.” Instead it found that Starbucks failed to prove that the green circle mark has acquired distinctiveness, and so the refusal to register that mark was affirmed.

Read comments and post your comment here.

TTABlog comment: The criticism of the Kaplan survey because it was conducted via the Internet must be somewhat disturbing to survey professionals. Is the Board suggesting that we should go back to mall intercept surveys? Nationwide? How expensive would that be?

BTW- See Rule 2.52(b)(1) concerning how to claim a particular shade of color. And also see Covidien LP v. Masimo Corporation, 109 USPQ2d 1696 (TTAB 2014) [precedential] [TTABlogged here], concerning a Section 18 petition to restrict a color registration for red to a particular shade or red.

Text Copyright John L. Welch 2019.