September 30, 2014

The Philippines’ Bureau of Legal Affairs sustained the opposition of Starbucks Coffee Co. against a trademark application for “THE FRAP BAR Everyone Deserves Frap and Design” filed by Café De Manila Corporation in connection with coffee.

In its opposition, Starbucks asserted that Café de Manila should not be allowed to register the term “FRAP” because it is the prefix and the dominant element of its registered mark “FRAPPUCCINO”. Starbucks argued that relevant consumers habitually mention the word “FRAP” when ordering “FRAPPUCCINO” beverages, such that registration of Café de Manila’s mark will likely cause confusion and deception as to the source of Café de Manila’s products.  Moreover, Starbucks alleged that Café de Manila’s use of the word “FRAP” is intended to unfairly profit from the goodwill, fame and notoriety of Starbucks’ FRAPPUCCINO beverages.  The Bureau of Legal Affairs agreed.

In reaching a decision, the Bureau noted that at the time Café de Manila filed its trademark application for its mark, Starbucks already owned registrations for “FRAPPUCCINO” trademark in the Philippines and in other countries. Recognizing the popularity of the “FRAPPUCCINO”, the Bureau cited the testimony of Starbucks baristas that consumers habitually use the word “FRAP” when ordering “FRAPPUCCINO” beverages. The Bureau concluded that Café de Manila may not appropriate the word “FRAP”, which constitutes the dominant portion of Starbucks’ registered “FRAPPUCCINO” trademark because it will lead to a likelihood of confusion and deception among the purchasing public.

This decision is in line with well-established precedent that marks containing words or terms that are similar to a dominant element or feature of a registered mark will result in consumer confusion. In fact, the Bureau cited the Supreme Court case of McDonald’s Corporation v. Macjoy Fastfood Corporation for the proposition that the dominant feature of a registered mark attracts the attention of would-be customers, and appropriation of such dominant feature will result in consumers believing that the goods or services covered by the similar marks are one and the same, or an affiliate or under the sponsorship of the other.

The Bureau affirmed the distinctiveness of FRAPPUCCINO while noting that it is a suggestive trademark. It explained that while suggestive marks are capable of shedding light upon the characteristics of goods and services, such marks nevertheless involve an element of incongruity, figurativeness or imaginative effort on the part of the observer.  Therefore, suggestive marks are entitled to protection against third parties who appropriate its dominant elements or features.

The appeal period has not lapsed at the time of this writing.