Small Cafe Changes Its Name Due To Having Spanish Word For ‘Coffee’ In Its Name


from the thanks-a-latte dept

There are lots of reasons why trademark disputes get really stupid, really fast. The mother of all those reasons is, of course, the USPTO’s inability to cast a critical eye towards the applications its receives. Far too many trademarks are granted for words and terms that are not unique source-identifiers of goods and services. But one other, and I think related, common cause of stupid trademark disputes is when foreign languages get involved. What is an obviously generic or descriptive term in English suddenly confuses the examiners as the Trademark Office the moment those words are in another language.

Such as coffee, for instance. There is no realm in which the USPTO would allow one coffee bar or cafe to somehow monopolize having the word “coffee” in its name. Unless, perhaps, if that “coffee” along with the word “with” were in Spanish. Then all bets are off.

The Tampa Bay Latin Chamber hosts community events across the Tampa Bay area. They called it Cafe Con Conexiones, meaning coffee with connections. That was until the nonprofit said they were forced to change their name.

“My organization was provided a cease and desist letter from one of the big Tampa law firms and basically the cease and desist letter said, ‘Please stop using the name Café Con Conexiones because it is substantially similar to Cafe Con Tampa,’” Danielle Hernandez, President of the Latin Chamber, explained.

Yes, Cafe Con Tampa somehow got the USPTO to grant it a trademark on “cafe con.” There is no world in which I can believe that the same phrase in English would have been granted any kind of trademark. And, no, the hand-wringing from attorneys commenting on the matter doesn’t change the fact that the trademark in question is non-distinctive. This comes after Cafe Con Tampa’s founder, Del Acosta, mentioned that there had in fact been members of the public that expressed confusion over whether the two cafes were related.

Acosta said they’ve had people confused about the two organizations. That’s where it can get tricky, registered patent attorney, Anton Hopen, said.

“Actual confusion is extremely valuable evidence. We speculate that there’s a likelihood of confusion but when you have evidence of actual confusion, that should be very important to a deliberative body like a judge or a jury,” Hopen explained.

Right, but evidence of what, exactly? That trademark infringement is happening? Or that the USPTO fucked up by granting a trademark on a generic phrase combined with two organizations that have both chosen very non-distinctive names? Because I would argue it’s the latter.

Which probably doesn’t matter, because Hernandez has indicated that she is in the process of changing the name of her organization. That said, she’s changing it to Cafecito Con Conexiones, so I guess we’ll see if that staves off Cafe Con Tampa’s legal dogs.

Filed Under: coffee, likelihood of confusion, trademark

Companies: cafe con conexiones, cafe con tampa, cafecito con conexiones

Las Vegas News Magazine

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