Trader Joe's vs. Pirate Joe's
Cheeseburger in Paradise
Dick's Sporting Goods
For many, the name “Charbucks” could easily be mistaken for a typo of the famous Seattle-based coffee chain. However, last Friday, a federal appeals court ruled that a small, family-owned New Hampshire roaster could continue selling its line of Charbucks coffee despite Starbucks' protests.
One of the key elements of the case was a survey of 600 people that found that consumers' No. 1 association with the name Charbucks was the brand Starbucks. However, as only 4.4 percent said that Starbucks would be the most likely place to sell a Charbucks product, the judge ruled that the two were only minimally similar.
For big brands, defending a name from copycat competition is a common legal struggle. A familiar name can bring customers in, even if chains do not share a common owner. In other cases, small businesses claim to want nothing to do with the big chain, and may have even predated its foundation. From McDonald’s to Cheeseburger in Paradise, legal battles over names are a slippery slope that can quickly grow absurd.
Charbucks will continue to sell its coffee, much to the big coffee chain’s chagrin. However, this is hardly the first time that Starbucks has fought against an alleged copycat. In 2005, Starbucks took on Sam Bucks, a coffee shop run by Sam Buck Lundberg in Astoria, Ore. The case became a media circus, with Lundberg painted as David to the coffee chain’s Goliath. Nonetheless, a judge ruled in favor of Starbucks. Sam Bucks became Downtown Coffee. Around the same time, Starbucks was also able to come to amicable settlements with HaidaBucks and Star Bocks.
McDonald’s’ easily recognizable name has led to a plethora of copycats around the world. The burger chain’s defense of the “Mc-“ prefix has led to a number of lawsuits over items from McMunchies to McCurry. Perhaps the oddest case of name mix up is McDonald’s vs. Ronald McDonald, the owner of McDonald’s Family Restaurant in Fairbury, Ill., which opened in 1956. While the McDonald’s franchise and McDonald’s Family Restaurant clashed over the years through letters and phone calls threatening lawsuit, Ronald McDonald – the man, not the clown – succeeded in keeping his restaurant open.
Pirate Joe’s shares more than a similar name with the grocery chain Trader Joe’s – it sells all Trader Joe’s products. Mike Hallatt, the owner of the Canadian reseller of Trader Joe’s goods, drives groceries from Washington State to Vancouver to sell to Trader Joe’s fanatics north of the border. Trader Joe’s does not operate any stores in Canada, so Hallatt argues he is simply fulfilling a public need. Trader Joe’s filed a lawsuit against Hallatt last summer, causing the store to change its name to “_Irate Joe’s.” Earlier in October, a U.S. district court judge dismissed the trademark infringement lawsuit, ruling that the resale of Trader Joe’s goods in Canada was not harming U.S. commerce nor Trader Joe’s itself.
Jimmy Buffett is anything but chill about defending the name of “Cheeseburger in Paradise.” In 1997, Buffett sued owners of Cheeseburger in Paradise, a Hawaiian eatery and bar, claiming the restaurant’s name was stolen from the lyrics of his famous song. After a four year legal battle, the restaurateurs were allowed to continue using the name in existing locations, but were prevented from expanding under the same moniker. Buffett partnered with Outback Steakhouse to launch his own chain of Cheeseburger in Paradise restaurants in 2002, having previous experience with cafes named Margaritaville, in homage to another one of his hit songs.
In-N-Out Burger has defended the name and products of the burger chain more than once. The Irvine, Calif.-based chain has successfully filed lawsuits against burger joints from Utah to Texas, arguing that the restaurants’ were copying In-N-Out’s menu and signature red, white and yellow signage In-N-Out only has restaurants located on the West Coast and parts of Texas, leading to a cult following and copycat tactic’s by burger chains eager to get a taste of the original’s success.
In February 2012, Sprinkles Cupcakes settled a federal trademark infringement lawsuit against a store named Pink Sprinkles. Sprinkles Cupcakes, founded by Food Network’s “Cupcake Wars” judge Candace Nelson, claimed that the similarities in the names between Nelson’s chain and the store in Fairfield, Conn., would likely cause confusion for customers. Following the lawsuit, Pink Sprinkles was renamed “Pink Cupcake Shack.”
Gary Richard Shank, owner of a 27-year-old fishing, hunting and sporting goods shop Dick’s Sporting Good’s Inc., took on sporting goods giant Dick’s Clothing and Sporting Goods Inc. in 1996. Shank was tired of receiving a reported 50 phone calls a day mistaking his Essex, Md. shop for the chain. While Shank had not trademarked the name, he believed to be protected under “common law” rights. In March 1998, Shank lost his court battle and closed down his store for good.