Can Starbucks Stop a Competitor from Using the Term “JEW BUCKS” After In re Slants?September 24, 2018

In 2014, SwordPen Publishers LLC filed a trademark application for the mark JEW BUCKS SMART MONEY. RICH COFFEE. for use in connection with restaurant services featuring coffee and espresso drinks. At that time the United States Patent and Trademark Office took it upon itself to stop the registration of this mark under the now defunct “disparagement clause”. In an office action issued against the application, the PTO, relying on 15 U.S.C. §1052(a), refused registration because the applied-for mark consists of or includes matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs, or national symbols.

However in June 2017, in the In re Slants case, the Supreme Court famously declared the disparagement clause unconstitutional as a violation of the First Amendment insofar as the statute amounted to an impermissible viewpoint restriction (that is, it permitted registrability of a positive reference to a particular group, on the one hand, but denied registration of a negative reference to the same group).

Knowing that the application could no longer be refused as disparaging, SwordPen refiled for the very same mark on October 19, 2017. Interestingly, when reviewing this new application, the PTO for the first time raised a likelihood of confusion objection over Starbucks’ STARBUCKS registered trademarks, but ultimately SwordPen overcame that objection and the mark was approved for registration.   

Starbucks, however, isn’t willing to let this mark—that it contends is anti-Semitic—register without a fight. On September 12, 2018, Starbucks Corp. filed an opposition against SwordPen’s application. Having no ability to rely on the now defunct disparagement clause, Starbucks is relying on likelihood of confusion and dilution by tarnishment contending that the mark is “anti-Semitic”. 

With respect to likelihood of confusion, Starbucks points out that SwordPen is using the words bucks and coffee and replicating the look and feel of Starbucks’ famous logo.

With respect to dilution by blurring, Starbucks argues “Applicant’s mark carries strong negative connotations because the term ‘Jew Bucks’ has been used pejoratively and derogatively to describe opposer and/or opposer’s connection with people of the Jewish faith or ethnicity”. The notice of opposition included a number of screenshots showing the use of “Jew Bucks” on racist webpages, including an article entitled “Jew Bucks from Death –Starbucks Kills Christian Children” and another talking about “Jewbucks” waging a “War on Christmas”.

It will be interesting to watch how the Trademark Trial and Appeal Board resolves this dispute which in some ways requires the Board to weigh in on some of the same questions that arose in the In re Slants case. The question arise: Can a competitor prevent registration of a disparaging trademark under the auspices of dilution when it would otherwise be registrable? This is certainly a case to watch.

Christine Lebron-Dykeman is Chair of the Trademark Practice Group at McKee, Voorhees & Sease, PLC. For additional information, please visit www.ipmvs.com or contact Christine directly via email at christine.lebron-dykeman@ipmvs.com.