Coffee Clash: "Siren" Branding Brawl Pits Starbucks Against Small Business

When mother-and-daughter entrepreneurial duo Monica and Sarah Hamilton launched Mountains and Mermaids in 2017, they likely never imagined that their brand would someday find itself on a collision course with coffee colossus Starbucks.

Six years later, Mountains and Mermaids is facing legal action from the world's largest coffee chain over similarities between their Siren's Brew coffee and Starbucks' Siren Blend.

But is this legal face-off an actual thing, or a whole latte sound and fury, signifying nothing? We're going to have to dive deep to find out how this coffee clash is likely to resolve, so I hope you brought your scuba gear!

A Tale of Two Coffees

Starbucks' origin story is well-known. From a single location launched in Seattle, Washington in 1971, the brand has become by far the world's biggest coffee chain. If you live in any major city in the US, chances are good that you're no more than a few miles from the nearest Starbucks franchise. Love or hate it, very few people will deny any awareness at all of the brand, especially given its ubiquitous nature in books, movies, and TV shows that have taken pop culture by storm. Starbucks' stylized green-and-white siren logo is arguably one of the most famous on the planet, right up there with Google and Apple in terms of sheer presence.

By contrast, Mountains and Mermaids had a much quieter and more prosaic beginning. According to co-founder Sarah Hamilton:

“We were living in Florida, and I grew up in Alaska, so I missed the mountains, but we were living by the beach, and I wanted to write a blog called Mountains and Mermaids. And we moved back to Alaska and decided to take that brand name and turn it into a brand."

The former barista did exactly that in 2017, parlaying her blog into a line of merchandise with a distinct nautical flavor, including apparel--and later, in 2018, stepping into the coffee space with a line of caffeine-laced beverages known as "Siren's Brew."

Which is when Mountains and Mermaids drew the attention, and ire, of Starbucks.

Coffee Clash

In late 2018, Mountains and Mermaids filed a trademark application for the name "Siren's Brew," which would apply to both the merchandise and a new line of coffee the brand wanted to roll out.

As fate and timing would have it, at the same time, Starbucks was working on deploying its own Siren's Blend, to further capitalize on the siren imagery the company has relied on for over 50 years.

However, the company's application, filed in January of 2019, was rejected by the USPTO because Mountains and Mermaids got their "Siren's Brew" mark application in first.

The USPTO ruled that the Starbucks mark would create confusion in the marketplace, the prevention of which is one of the primary reasons to have a trademark in the first place.

And then things got messy.

Starbucks filed an opposition to Mountains and Mermaids' trademark, including claims that the mere use of the word "siren," let alone the imagery of a siren sipping a cup of coffee, constitutes infringement upon Starbucks' intellectual property and brand.

Furthermore, the company claims that the imagery Mountains and Mermaids employed, even though it's completely different stylistically, plays off Starbucks' notorious logo to such a degree that it would cause market confusion to allow it to continue.

The company has even gone so far as to claim that the word "siren" is used commonly among employees at every level to describe the company as a sort of verbal shorthand, and therefore is a de facto trademark even if it doesn't align with the de jure definition.

Finally, Starbucks has even gone after Mountains and Mermaids' top-selling apparel slogans, which read, "A siren needs her [morning coffee/evening wine] before a long [day/night] of wrecking ships & drowning men," due to the obvious connection to coffee.

Mountains and Mermaids maintains that the obviousness of the difference between the Starbucks logo and Mountains and Mermaids' is sufficient to ensure there is no likelihood of brand confusion to an average consumer. Monica Hamilton, Sarah's mother and co-founder, stated:

“There’s no brand confusion here at all...We’re not interested in interfering with their business, nor what are we interested in them interfering with our business.”

Mountains and Mermaids, and their attorney, are unconvinced by Starbucks' assertion that the use of the word "siren" among employees to describe the company and its branding rise to the level of a de facto or common-law trademark.

And THEN it got weird.

If all of the foregoing sounds like some sort of Bizarro-world comic book setup to force a confrontation between Superman and Lex Luthor, things got even stranger once the USPTO's Trademark Trial and Appeal Board (TTAB) weighed in.

The Board issued a split decision stating that while the Siren's Brew mark would cause confusion with Starbucks coffee, it would NOT cause confusion in the realm of merchandise such as apparel.

This was both a win and a loss for Starbucks, because the company's megalithic 348-page opposition notice was clearly aimed at a clean sweep against its smaller perceived competitor. The five major assertions Starbucks offered in hopes of bolstering its position failed to sway the Board entirely, thereby leaving Starbucks in a precarious position with regards to its siren branding-at least as it concerned others.

But the weirdness didn't stop there.

Starbucks offered to pay Mountains and Mermaids' filing costs to apply for ANOTHER trademark(!), such as "Mermaid's Brew." If the company accepted, Starbucks would have both successfully asserted its actual, common-law, and considered rights to the siren imagery, and still managed to come off as a magnanimous victor.

However, in a move that shouldn't surprise anyone, Mountains and Mermaids declined the offer and remains defiant and determined to fight for its trademark, taking the offer as an insincere and cynical public relations ploy with little or no grounding in actual or legal fact.

Mountains and Mermaids isn't the first small business to tell Starbucks to pound sand.

In 2013, a boutique St. Louis brewery, Exit 6 Brewery, which called one of its offerings "Frappiccino," received a cease-and-desist notice from Starbucks for trademark infringement because of the one-letter difference between the beer and Starbucks' flagship offering, the Frappuccino. Exit 6 sent Starbucks a check for $6 to account for any profits the brewery made from the alleged infringement. Afterward, the "Frappiccino" was publicly re-christened "The F-Word"...and sales exploded, apparently driven by consumers who were happy to see Starbucks get a comeuppance at the hands of a local favorite.

The Bottom Line

Given that this case has already dragged on for almost five years, I'd be very surprised to see any resolution anytime soon.

Starbucks isn't going to give up on its dogged determination to effectively own the word "siren," at least as it could relate to coffee and beverages. Mountains and Mermaids has dug their heels in, and they've raised some very valid points about the fact that if Starbucks was really that committed to associating the word "siren" with coffee, they surely would have thought of it sometime earlier in their half-century history than 2018.

In this case, Starbucks is facing a tough legal battle as well as an an uphill battle in the court of public opinion. Even the most diehard Starbucks fanatic who can't fathom the idea of facing the day without their jolt of frappuccino/rapachino/Al Pacino is likely to look at this with a very jaundiced eye.

And given that Starbucks has won legal victories but lost in the public arena before, it's tough to imagine any way for the company to parlay a partial defeat into anything but a Pyrrhic victory.

Meanwhile, Mermaids and Mountains stands poised to go from strength to strength as public sentiment continues to bend toward them.

While this may not be a paradigm-changing case to watch on the surface, it's certainly worth keeping an eye on because of how it may impact how large businesses interact with smaller potential competitors in the future.

And that probably makes this the most noteworthy thing about it.

Sure, it may not rewrite the law books, but how it's resolved will certainly impact the course of history and IP law for years to come!

ABOUT JOHN RIZVI, ESQ.

John Rizvi is a Registered and Board Certified Patent Attorney, Adjunct Professor of Intellectual Property Law, best-selling author, and featured speaker on topics of interest to inventors and entrepreneurs (including TEDx).

His books include "Escaping the Gray" and "Think and Grow Rich for Inventors" and have won critical acclaim including an endorsement from Kevin Harrington, one of the original sharks on the hit TV show - Shark Tank, responsible for the successful launch of over 500 products resulting in more than $5 billion in sales worldwide. You can learn more about Professor Rizvi and his patent law practice at www.ThePatentProfessor.com

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