Coffee maker roasts a competitor over trademark. Global Orange v. Coffee Direct

A trademark is a symbol, word or phrase that signals to consumers the identity of a producer of a product. Trademark law in the United States is governed by federal statutes, state laws and common law principals. Generally, the first person to use a trademark in commerce is referred to as the senior user. A person who uses the same, or similar, trademark after the senior user are referred to as junior users. A trademark can be registered with the United States Patent and Trademark Office in the United States to strengthen the rights associated with a trademark, however registration of a trademark is not required to begin using a trademark and be granted some rights to the trademark.

The key to trademark law is the association consumers make between a trademark and the producer of a product. If a junior user brands products in a way which leads consumers to believe that the junior user’s products were produced by the senior user, that can be considered trademark infringement. A senior user can file a lawsuit for trademark infringement which requests that the court issue an injunction preventing the junior user from continuing to use the trademark and request monetary damages for trademark infringement which has occurred.

When a product is counterfeited with the intent of tricking consumers into buying counterfeit products, it is easier to prove trademark infringement. But when two trademarks are independently developed and just happen to be similar it is much more difficult to prove trademark infringement. When presented with a trademark infringement case a court will apply the Polaroid factors. These factors are derived from a Court of Appeals for the Second Circuit decision, so courts in other circuits can have slightly different factors, but most circuits follow a similar model. Briefly, the Polaroid factors look at: 1. Strength of the senior user’s mark, 2. Similarity of the marks, 3. Similarity of the products or services, 4. Likelihood that the senior user will sell the same products as the Junior user, 5. The junior user’s intent in adopting the mark, 6. Evidence of actual confusion, 7. Sophistication of the buyers, 8. Quality of the junior user’s products or services, and 9. related products and services.

A case which will illustrate how a court reviews the Polaroid factors is GLOBAL ORANGE, LLC v. COFFEE DIRECT, LLC, 1:19-cv-00164 (W.D.MI 2019). The plaintiff in this case is Global Orange, a coffee seller based in the state of Michigan, which brands its products using the trademark Biggby. The plaintiff first started using the name Biggby to trademark its products in 1997. The plaintiff’s trademark, reproduced above on the right, is typically printed in black text with an orange background. The plaintiff has several registered trademarks which include the word Biggby. One of the plaintiffs major products is a subscription service where customers sign up for regular orders of products to be delivered to the subscriber’s home or business. The plaintiff also has more than 200 franchise locations which sell the plaintiff’s products. Presently there are two locations in Texas that sell Biggby products.

The defendant in this case sells coffee using the trademark Bixby. The defendant offers consumers a service to have products delivered on a regular basis. The defendant’s products feature the word Bixby and a orange and navy blue color scheme. The defendant’s products are shown in the image above on the left.

The plaintiff feels that Bixby is confusingly similar to Biggby and has filed a trademark infringement lawsuit against the defendant. As evidence of consumer confusion, the plaintiff included an affidavit from a consumer that purchased the defendant’s products by mistake.

While the trademarks are similar, the products are the same and at least one consumer was confused, that does not mean the case is finished. The defendant will be given an opportunity to respond to the complaint and then the court weigh the evidence.

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