On June 28, 2024, Starbucks Corporation, a company focused on the food sector, particularly coffee-based products, filed a lawsuit in the US District Court for the Southern District of New York against Brandpat, LLC. Brandpat operates in the market as Starbuds Flowers and focuses on cannabis products. This legal action followed unsuccessful attempts at an out-of-court settlement. The central issue of the case involves the infringement of Starbucks Corporation’s trademark and copyright1, 2, 3 e 4, as well as its distinctive signs. among which the following stand out, which are protected in the United States by copyright and trademarks:
Therefore, the company would be infringing on its rights by using the STARBUDS brand and the following logo in its cannabis product marketing activities:
In this context, Starbucks argued, among other points, that the similarity between the signs is evident, both in terms of the nominative and figurative elements:
As a defense, it was argued that the market sectors are different: food industry versus cannabis products. However, the coffee shop chain also faced the risk of brand dilution and damage to its reputation, given Starbuds Flowers' attempt to associate its brand with Starbucks8 e 9. Therefore, if these allegations are deemed valid, the fact that the companies operate in different markets will not eliminate the violation of Starbucks' rights.
Another point in this case is the issue of parody10 e 11. As highlighted in the article “Caso “Dungeons and Dragons” x “Dungeons and Drag Queens” e a Paródia em Matéria Marcária” (The Case 'Dungeons and Dragons' v. 'Dungeons and Drag Queens' and Parody in Trademark Matters”), the Supreme Court of the United States ruled in the case Jack Daniel's Properties, Inc. v. VIP Products LLC that a parody mark is subject to the analysis of the possibility of confusion12 e 13 and:
The Lanham Act's exclusion from dilution liability for '[any] noncommercial use of a mark,' §1125(c)(3)(C), does not protect parody, criticism, or commentary when an alleged diluter uses a mark as a source designation for its own products.14.
Thus, considering that, according to the information contained in the records, Starbuds Flowers uses the STARBUDS brand to identify its products, claiming the possibility of using this sign based on parody appears to be a questionable argument.
Regardless of the outcome of the lawsuit, this case serves as an example to holders of Intellectual Property rights. By taking care of its assets, the holder demonstrates to competitors, the market, and the general public that it is vigilant and will not allow potential violations of its rights to occur without taking the appropriate defense measures. This strengthens the holder’s position in the market and protects against the weakening of its assets.
Therefore, it is recommended that holders of Intellectual Property rights avoid being tolerant of third-party actions that potentially violate their rights. Even if, at first, the possible violation seems insignificant, it may later prove to be harmful and serve as a precedent for others to take advantage of the holder's inaction as a supposed justification for infringing rights.
