Remember the unbridled success that was the Starbucks Unicorn Frappuccino?

Between April 19 and April 23, 2017, Starbucks introduced its limited edition “Unicorn Frappuccino ® blended beverage.” The drink caused a social media frenzy – good or bad, everyone had an opinion, and picture, of the drink.

The only problem, besides the taste, was that there was already a pending trademark on “Unicorn Latte,” (Ser. No. 87308906) filed January 20, 2017. The mark, which has currently reached publication for opposition in the registration process, is for Section 1A Use in Commerce. The End began selling the latte in December 2016, to the delight of social media conscious New Yorkers in the area.

So it comes as no surprise that in May 2017, the owner of the trademark – Brooklyn coffee shop “The End,” and its parent company, “Montauk Juice Factory” filed a federal lawsuit in the Eastern District of New York alleging trademark infringement and dilution.

The suit claims Starbucks’ drink is a knockoff of The End’s and that it both confuses The End’s customers as well as overshadows the small shop’s Unicorn Latte. Also, the suit points out that although composed of entirely different ingredients, the drinks look remarkably similar – possibly setting up trade dress claims.

Neither drink actually contains any coffee, The End’s latte is made from “cold-pressed ginger, lemon juice, dates, cashews, blended with additional healthy, dried ingredients such as maca root, blue-green algae, and vanilla bean,” while for Starbucks, “blended crème is made with a sweet dusting of pink powder, blended into a crème Frappuccino with mango syrup and layered with a pleasantly sour blue drizzle. It is finished with vanilla whipped cream and a sprinkle of sweet pink and sour blue powder topping.” In other words, The End’s Latte is healthy, while Starbuck’s Frappuccino is – SURPRISE – not.

Mythical Musings – Trademarks and Dilution

A trademark is any recognizable symbol, literally anything – words, shapes, colors, sounds, or smells – which identifies a product or service and denotes its source, thus distinguishing that product or service from other sources. A trademark must (1) identify the source of a product or service, distinguishing it from others and (2) represent the goodwill associated with that service. And it must be used in commerce to have any protectable rights attached to it.

Now, the amount of protection and enforceable rights any given trademark may have depends on the strength of the mark. The stronger the mark, the easier it is to be registered and successfully used in litigation. A mark’s strength is gauged using the spectrum of marks, which from weakest to strongest is:

Generic Marks: a word or phrase so inherently descriptive as to be incapable of ever functioning as a source-identifier, e.g., Vodka Brand vodka, or “clock” for a timepiece; Descriptive Marks: often a word or phrase that merely describes a product, its function, or ingredient. Usually too weak to function as a source-identifier, e.g., LIGHT AND FLUFFY for whipped cream. Descriptive Marks may function as a protectable mark if they acquire secondary meaning, such as with International Business Machines (IBM); Suggestive Marks: hint or suggest the nature of the product, service, or its attributes, generally requiring some leap of logic or imagination to draw a connection between the mark and product e.g., CHICKEN OF THE SEA for tuna; Arbitrary Marks: the mark has a common meaning, but is used in connection with products or services that are totally unrelated to its definition, e.g., APPLE for computers. Arbitrary Marks are inherently distinctive; and Fanciful or Coined Marks: typically an invented word or phrase, a combination of letters with no meaning. This is the strongest possible mark and is also inherently distinctive, e.g., XEROX, EXXON, or KODAK.

Mythological creatures have been trending for a while on social media – specifically unicorns and mermaids. But, regardless of the seemingly ubiquitous use of those terms to describe products and foods with a blindly bright and glittery color scheme, the law takes a while to notice trends. So, while using UNICORN to signify a certain color scheme may seem descriptive to you or me, from a legal perspective “suggestive” is currently the more appropriate category.

Let’s walk through this – we need to examine two things, (1) the product and (2) the proposed mark. The End’s product is a juice drink with vibrant and whimsical colors. The proposed mark, UNICORN LATTE, inherently does not describe the product. A latte is a type of coffee drink made with espresso and hot steamed milk, and a unicorn is a mythical animal represented as a horse with a single straight horn projecting from its forehead, often predominantly white with a rainbow colored mane. Thus, UNICORN LATTE suggests a coffee drink that has the attributes of a unicorn – in this case, whimsical colors. No doubt, The End’s lawyers will argue the mark is arbitrary rather than suggestive, but this author thinks that is a stretch.

Suggestive or Arbitrary marks are fairly strong, so unless there’s heavy opposition to its registration there’s a good likelihood UNICORN LATTE will be registered as a trademark. If that happens, then The End’s protective rights will retroactively reach back to the date the registration was filed – January 20, 2017, nearly three months before Starbucks’ drink came out.

Champing at the Bit: Litigation

Registration is just the starting gate, though. Litigation is a whole other derby. While the trademark examiners are unlikely to examine social media trends when issuing a mark, you know Starbucks will get on its high horse and argue the pervasive trend renders the mark descriptive or generic to a judge. And I’m sure the judge will give careful consideration to Starbucks’ arguments, after all, that’s their job.

The End is suing for trademark infringement and dilution. Trademark infringement is where you sue someone for either unlawfully using your trademark, or a mark that’s really close to being the same as yours, such that consumers are confused about whose product is whose. Here, The End would have to show whether Starbucks’ Unicorn Frappuccino is likely to create consumer confusion with the Unicorn Latte, which the complaint does a pretty good job of laying out.

Trademark dilution is a claim to protect the “distinctiveness” of The End’s Unicorn Latte mark. Dilution is a difficult claim for a plaintiff (here, The End) because they have to show their mark is famous – like, really famous, we’re talking Kentucky Derby, Seabiscuit, Secretariat, or Man o’ War famous. It is a high burden, and not often met.

A court could probably go either way on this one; the internet trend for unicorn foods is an interesting wrinkle in what would otherwise be a fairly straightforward case. Unicorn food seems to be a trend with some staying power; this author just hopes the unicorn slaughter can stop.