Starbucks v. Obsidian Group - Freddoccino PDF

Case 1:16-cv-00029 Document 1 Filed 01/11/16 Page 1 of 21
Julia Huston (jhuston@foleyhoag.com)

Natasha N. Reed (nreed@foleyhoag.com)
Jenevieve J. Maerker (jmaerker@foleyhoag.com)
FOLEY HOAG LLP
1540 Broadway, 23rd Floor
New York, New York 10036
Tel: (646) 927-5500; Fax (646) 927-5599
Attorneys for Plaintiff
UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF NEW YORK
------------------------------------------------------------x
:
STARBUCKS CORPORATION d/b/a
:
STARBUCKS COFFEE COMPANY,
:
:
Plaintiff,
:
:
v.
:
:
OBSIDIAN GROUP, INC.,
:
:
Defendant.
:
------------------------------------------------------------x
Civil Action No.

COMPLAINT
Plaintiff Starbucks Corporation d/b/a Starbucks Coffee Company (Starbucks), for its
Complaint against Obsidian Group, Inc. (Obsidian or Defendant), alleges, on knowledge as
to itself and otherwise on information and belief, as follows:
NATURE OF THE ACTION
1.
Starbucks is a purveyor of high-quality coffee and other beverages. Starbucks
FRAPPUCCINO brand of blended frozen beverages is famous throughout the United States.
2.
Starbucks recently learned that defendant Obsidian Group, Inc. has been selling
blended frozen beverages at its Coffee Culture cafs under the name FREDDOCCINO.
B4492195.5
3.
Obsidians conduct is diluting the distinctive quality of Starbucks famous
FRAPPUCCINO mark and is likely to confuse consumers into believing that Obsidians
products are affiliated with, or are endorsed or approved by, Starbucks, when in fact they are not.
4.
In addition, Obsidian displays its FREDDOCCINO mark with the registered
trademark symbol, , although it owns no U.S. registrations for FREDDOCCINO. Obsidian

also presents its Coffee Culture cafs as Fair Trade Certified, although, on information and
belief, they do not offer any Fair Trade Certified coffees.
5.
Obsidians unlawful actions are causing immediate and irreparable harm to
Starbucks, as well as harming consumers of frozen blended beverages in New York State and
elsewhere. To redress the harm being done to Starbucks and the public, Starbucks brings claims
for federal trademark dilution under the Trademark Dilution Revision Act of 2006, 15 U.S.C.
1125(c); infringement of federally registered trademarks under Section 32(l) of the United
States Trademark (Lanham) Act of 1946, as amended (the Lanham Act), 15 U.S.C. 1114(l);
trademark infringement, unfair competition, and false advertising under Section 43(a) of the
Lanham Act, 15 U.S.C. 1125(a); and related claims under New York statutory and common
law.
THE PARTIES
6.
Plaintiff Starbucks is a Washington corporation with its principal office at 2401
Utah Avenue South, Seattle, Washington 98134.

7.
On information and belief, defendant Obsidian is a Canadian corporation with a
usual place of business at 1770 Argentia Road, Mississauga, Ontario, L5N 3S7.
JURISDICTION AND VENUE
8.
This Court has personal jurisdiction over Obsidian because, inter alia, Obsidian
regularly conducts business in New York through Coffee Culture caf locations in Tonawanda,
2
B4492195.5
Cheektowaga, Batavia, Springville, Ellicottville, and Greece, New York, and has offered and
sold its infringing FREDDOCCINO products in New York. Obsidians actions have caused
injury to Starbucks and to consumers in New York.
9.
This action arises under the Lanham Act, 15 U.S.C. 1125(c), 1114(1), and
1125(a), New York General Business Law 349, New York General Business Law 350, New
York General Business Law 360-l, and New York common law. This Court has jurisdiction
over the subject matter of this action pursuant to 15 U.S.C. 1121 and 28 U.S.C. 1331 and
1338. This Court has supplemental jurisdiction over the state law claims pursuant to 28 U.S.C.
1367. In addition, because there is diversity of citizenship between the parties to this action
and the matter in controversy exceeds $75,000, the Court has jurisdiction pursuant to 28 U.S.C.
1332.
10.
Venue is proper in this district pursuant to 28 U.S.C. 1391 because a substantial
part of the events giving rise to plaintiffs claims occurred in this District.
FACTS
The Starbucks Coffee Business and the Famous FRAPPUCCINO Mark
11.
Starbucks is a leading purveyor of fine Arabica coffee. The company, which
began in 1971, has grown from a single location to approximately 12,000 retail locations in the
United States, including approximately 600 locations in the State of New York, and more than
8,000 locations in over 60 foreign countries. Starbucks retail stores serve brewed coffee,
espresso-based beverages, teas, blended beverages, soft drinks, and other foods and beverages,
and carry packaged coffee, coffee equipment, mugs, and other Starbucks-branded merchandise.
These stores conducted billions of transactions in 2015.
12.
Starbucks has developed a strong reputation for fresh-roasted specialty coffees,
brewed coffees, espresso beverages, and other products and has earned worldwide success as a
3
B4492195.5
result of its knowledgeable and well-trained staff, its excellent service, and the consistency of its
coffee experience for consumers.
13.
In addition to offering high-quality products and services, Starbucks is committed
to ethical sourcing for its coffee. Starbucks adheres to the Coffee and Farmer Equity
(C.A.F.E.) Practices program for the ethical sourcing of its coffee, developed in collaboration
with Conservation International. This program sets forth standards in the following four
areas: product quality, economic accountability, social responsibility, and environmental
leadership. 99% of the coffee sourced by Starbucks meets C.A.F.E. Practices standards, and
Starbucks aims to close that last 1%.
14.
Starbucks is one of the worlds largest purchasers of coffees certified under the
standards set by Fairtrade Labelling Organizations International (FLO). Specifically, in the

fiscal year that ended September 27, 2015, Starbucks purchased over 45 million pounds of green
(unroasted) coffee beans certified under FLO standards. Some of Starbucks coffee blends,
including its Italian Roast and Caf Estima Blend, are composed exclusively of beans certified as
meeting FLO sourcing standards, and are therefore labeled as Fairtrade certified.
15.
Since 1991, Starbucks and its predecessor-in-interest have used the
FRAPPUCCINO mark in connection with coffee and other beverages. As documented in

Exhibit A, Starbucks owns numerous registrations issued by the U.S. Patent and Trademark
Office for the mark FRAPPUCCINO, including the following:
Reg. No.
1,745,953
Mark
FRAPPUCCINO
Goods and Services

Coffee beverages for consumption on or off the premises
4
B4492195.5
Reg. No.
2,148,066
Mark
FRAPPUCCINO
Goods and Services

Milk, flavored milk, milk-based food beverages
Non-carbonated soft drinks
3,080,371
FRAPPUCCINO
Restaurant, cafe, cafeteria, snack bar, coffee bar and coffee

house services.
3,535,367
FRAPPUCCINO
Coffee, tea, cocoa and espresso beverages, and beverages

made with a base of coffee, tea, cocoa and/or espresso, readyto-drink coffee, ice cream, milkshakes and frozen confections
Registration Nos. 1,745,953, 2,148,066, 3,080,371 and 3,535,367 are valid and subsisting and
incontestable under 15 U.S.C. 1065 and are therefore conclusive evidence of the rights of
Starbucks to the FRAPPUCCINO mark covered by those registrations.
16.
Starbucks owns the only FR-----CCINO marks currently registered by the U.S.
Patent and Trademark Office.

17.
FRAPPUCCINO is a coined mark, invented by Starbucks predecessor as a
portmanteau of the words frappe (meaning milkshake, derived from the French word frapp)
and cappuccino.
18.
Starbucks stores sell frozen blended beverages, inter alia, under the
FRAPPUCCINO mark. Blends of espresso, milk, and ice constitute the core of the
FRAPPUCCINO line, but consumers may also order non-dairy options, and non-coffee options,
such as tea-based, fruit-based, and crme-based beverages. FRAPPUCCINO beverages are
available in a variety of flavors and can be topped with whipped cream and flavored sauces and
syrups.
19.
In the fiscal year that ended September 27, 2015, U.S. Starbucks stores had more
than $1.5 billion in sales of FRAPPUCCINO handcrafted blended beverages.
5
B4492195.5
20.
In 1996, the North American Coffee Partnership, formed between Starbucks and
Pepsico, began selling FRAPPUCCINO ready-to-drink bottled chilled coffee drinks, available
in Starbucks stores, leading grocery stores, and other retail stores throughout the United States.
The FRAPPUCCINO ready-to-drink bottled chilled coffee drinks achieved U.S. sales
exceeding $1 billion in the fiscal year ending September 27, 2015.
21.
Starbucks retail locations prominently display the FRAPPUCCINO mark on
signage and menus in connection with coffee and other blended frozen beverage products.
Promotion of the FRAPPUCCINO brand occurs outside retail stores in print and mass transit
advertisements as well as through digital marketing, among other channels. U.S. marketing and
advertising expenditures for the FRAPPUCCINO line of products exceeded $10 million for the
fiscal year that ended September 27, 2015.
22.
The FRAPPUCCINO brand has earned a highly devoted consumer base and
large following, and has attracted considerable media attention. Over 11 million people like
the Starbucks Frappuccino Facebook page and over 196,000 people follow the @Frappuccino
Twitter account. FRAPPUCCINO blended beverages appeared in the movies Zoolander,
Austin Powers, and Austin Powers: The Spy Who Shagged Me. Numerous news outlets,
including Wall Street Journal, Los Angeles Times, ABC, CBS, Fox News, MSNBC, NBC, and
NPR have covered FRAPPUCCINO blended beverages, resulting in billions upon billions of
media impressions. The October 2015 FRAPPUCCINO promotion with professional athlete
Marshawn Lynch generated 392 million media impressions over the four-day period of October
20 to 23, 2015, across media outlets ranging from Sports Illustrated to Time.
6
B4492195.5
23.
As a result of the extensive and prominent use described above, the
FRAPPUCCINO mark is well known and has become famous, and was famous prior to any of
Defendants complained-of activities.
Starbucks Licensing of the FRAPPUCCINO Mark
24.
Outside of Starbucks stores operated either directly by Starbucks or by its
licensees, customers can enjoy FRAPPUCCINO blended beverages at select third-party

foodservice accounts. These licensed foodservice accounts enable Starbucks to provide products
through catering services, retail stores, and other locations.
25.
To distinguish a foodservice account from a Starbucks store, Starbucks
foodservice accounts use the We Proudly Serve Starbucks legend and logo shown below:
The We Proudly Serve marks serve to communicate to consumers that the account, not
Starbucks, is preparing and serving the beverage. Starbucks closely tracks use of this
designation, and authorized foodservice accounts must use non-Starbucks branding as their
principal branding. Starbucks provides some marketing materials, such as counter display cards,
for use by foodservice accounts. All other marketing materials must come to Starbucks for
review and approval before the foodservice accounts may use them.
26.
Starbucks is highly selective in choosing which foodservice accounts it will
authorize. When assessing a potential foodservice account, Starbucks takes many qualitative
factors into account, including geography, proximity to other Starbucks locations or accounts,
the reputation of affiliated and neighboring businesses, and the appropriateness of the location
for the premium brand image that Starbucks has cultivated.
7
B4492195.5
27.
Foodservice accounts may serve a number of products, including brewed coffee,
espresso-based beverages, hot cocoa, and FRAPPUCCINO blended beverages. Starbucks

provides accounts with the roasted coffee beans, cocoa powder, and sauces and syrups necessary
to make these beverages. Starbucks also provides accounts with storage, serving, cleaning, and
preparation supplies and labels and marketing. Finally, foodservice accounts may also be
eligible to purchase and use branded signage, aprons, cups, napkins, marketing materials, and the
like.
28.
Authorized foodservice accounts undergo rigorous training and are subject to
strict quality control standards. They are contractually required to use recipes and preparation
processes supplied by Starbucks. To control the quality of the beverages produced by
foodservice accounts, Starbucks has set numerous coffee standards, approves the type of
machines that can be used to produce beverages, allows only authorized representatives or agents
to calibrate machines, and engages in other activities to ensure that a foodservice account
beverage is consistent in quality and taste with a Starbucks retail outlet operated by Starbucks.
29.
Starbucks has the right to cancel any foodservice account that fails to adhere to
Starbucks quality and brand guidelines.

30.
As a result of Starbucks licensing to foodservice accounts, consumers are
accustomed to encountering genuine Starbucks FRAPPUCCINO beverages at stores with nonStarbucks principal branding.
Obsidian and Its Unlawful Activities
31.
Obsidian operates a chain of coffee shops known as Coffee Culture Caf & Eatery
(Coffee Culture). On information and belief, Obsidian operates some Coffee Culture shops
itself but uses a franchise model for most locations.
8
B4492195.5
32.
The majority of Coffee Culture locations are in Canada, but there are several
Coffee Culture cafs in the United States, including in Tonawanda, New York; Cheektowaga,
New York; Batavia, New York; Springville, New York; Ellicottville, New York; Greece, New
York; Erie, Pennsylvania; Orlando, Florida; Clearwater Beach, Florida; and Jupiter, Florida.
Obsidian has announced its intention to open Coffee Culture locations soon in Naples, Florida
and Miami, Florida.
33.
Starbucks has recently learned that the U.S. Coffee Culture locations have been
offering a line of frozen coffee beverages under the name FREDDOCCINO. Obsidians
FREDDOCCINO beverages, like Starbucks FRAPPUCCINO beverages, come in a variety of
flavors and are available with whipped cream and flavored syrup toppings.
34.
On information and belief, the FREDDOCCINO mark is a portmanteau of the
Italian word freddo (meaning cold) and cappuccino.

35.
The FREDDOCCINO mark is similar to Starbucks famous FRAPPUCCINO
mark in appearance, sound, and connotation: both begin with FR, contain four syllables, end
with CCINO, and evoke a European-inspired cold coffee beverage.
36.
In addition to the confusingly similar FREDDOCCINO name, Obsidian further
calls to mind Starbucks FRAPPUCCINO beverages through the similar appearance of its
FREDDOCCINO beverages and the cups in which they are served:
9
B4492195.5
Starbucks FRAPPUCCINO beverage
37.
Defendants FREDDOCCINO beverages
Upon information and belief, the quality of Obsidians FREDDOCCINO
beverages is materially different than the quality Starbucks customers have come to expect when
ordering a Starbucks FRAPPUCCINO beverage.
38.
Obsidian displays the registered trademark symbol, , with its FREDDOCCINO
mark, both on its Coffee Culture website (www.coffeeculturecafe.com) and in at least some of its
U.S. Coffee Culture stores, although it does not own any United States trademark registrations
for the mark FREDDOCCINO.
39.
Upon information and belief, Obsidian has altered the menu boards in some, but
not all, of the U.S. Coffee Culture stores, so that the frozen blended beverages are now called
FREDDOS. However, even in those stores that have adopted the name FREDDOS in
connection with the frozen blended beverages, the cups in which those drinks are served
continue to bear the FREDDOCCINO mark, and employees have referred to the drinks as
FREDDOCCINO and have recognized the name FREDDOCCINO when customers order it.
Meanwhile, the FREDDOCCINO mark (with the symbol) still appears on the menus in other
U.S. Coffee Culture stores, and on the Coffee Culture website.
10
B4492195.5
40.
Obsidian displays signage in certain of its U.S. Coffee Culture stores indicating
that Coffee Cultures goods and services are certified as meeting the Fair Trade Certified
sourcing standards set by Fair Trade USA. Obsidian also asserts on the Coffee Culture website
that Coffee Culture stores offer fair trade . . . coffee. On information and belief, Coffee
Culture stores do not offer any Fair Trade Certified coffees, but only offer only a limited range of
Fair Trade Certified teas.
Starbucks and Consumers are Being Harmed by Obsidians Actions
41.
The similarity between the FRAPPUCCINO and FREDDOCCINO marks in
appearance, sound, and connotation diminishes the capacity of Starbucks famous

FRAPPUCCINO mark to uniquely identify Starbucks line of frozen blended beverages.
42.
Upon information and belief, Obsidians use of the FREDDOCCINO mark is
causing confusion in the marketplace and will continue to do so, thereby harming consumers and
diminishing Starbucks brand equity.
43.
Upon information and belief, a consumer purchasing a FREDDOCCINO
beverage might mistakenly believe that he or she was purchasing a product of the same quality as
Starbucks FRAPPUCCINO beverages, or a product containing Fair Trade Certified coffee, or a
product whose name was protected by a United States trademark registration.
44.
Upon information and belief, as a result of Obsidians actions, consumers seeking
beverage products of the quality indicated by the FRAPPUCCINO mark, by ethical sourcing
certifications, or by a trademark registration are likely to be diverted from Starbucks to its
competitor, Obsidian, and are likely to be misled about the nature, characteristics, quality, or
source of Obsidians products.
11
B4492195.5
FIRST CLAIM FOR RELIEF

Federal Trademark Dilution Under 15 U.S.C. 1125(c)
45.
Starbucks realleges and incorporates herein the allegations set forth in the
foregoing paragraphs of this Complaint.

46.
Starbucks possesses valid and enforceable rights in the FRAPPUCCINO mark in
connection with all of the goods and services at issue in this case by virtue of its extensive use,
registration, promotion, and advertisement of the FRAPPUCCINO mark, and has possessed
such rights at all times material hereto.
47.
By virtue of its extensive use, registration, advertising, promotion, and consumer
and marketplace recognition, the FRAPPUCCINO mark is famous and distinctive, and is
entitled to protection against likely dilution by blurring and by tarnishment.
48.
Obsidian commenced the activities complained of herein after the
FRAPPUCCINO mark had become famous.

49.
Upon information and belief, Obsidians conduct is willful, deliberate, in bad
faith, and undertaken with knowledge of Starbucks prior rights, and with full knowledge that
Obsidian has no right, license, or authority to use Starbucks registered trademark or any
confusingly similar variant thereof, including FREDDOCCINO.
50.
Starbucks has been, is now, and will be irreparably injured and damaged by
Obsidians conduct as described above, as a result of the likely dilution of Starbucks famous
FRAPPUCCINO mark, and unless such conduct is enjoined by the Court, Starbucks will suffer
further harm to its registered trademark, reputation, and goodwill. This harm constitutes an
injury for which Starbucks has no adequate remedy at law.
12
B4492195.5
SECOND CLAIM FOR RELIEF

Infringement of Registered Trademark Under 15 U.S.C. 1114(1)
51.

52.
Obsidians unauthorized use of the FREDDOCCINO mark in connection with
frozen blended beverages constitutes a use in commerce of a reproduction, counterfeit, copy, or

colorable imitation of the trademark identified in U.S. Trademark Registration Nos. 1,745,953,
2,148,066, 3,080,371,and 3,535,367 that is likely to cause confusion, or to cause mistake, or to
deceive.
53.
Obsidian has no right, license, or authority to use Starbucks registered trademark or any
54.
Obsidians acts are intended to reap the benefit of the goodwill that Starbucks has
built up in its FRAPPUCCINO mark and constitute infringement of Starbucks federally

registered trademark in violation of Section 32(l) of the Lanham Act, 15 U.S.C. 1114(l).
55.
Obsidians conduct as described above, and unless such conduct is enjoined by the Court,
Starbucks will suffer further harm to its registered trademark, reputation, and goodwill. This
harm constitutes an injury for which Starbucks has no adequate remedy at law.
THIRD CLAIM FOR RELIEF
Trademark Infringement, Unfair Competition, and False Designation of Origin Under 15
U.S.C. 1125(a)
56.

13
B4492195.5
57.
Obsidians unauthorized use of the FREDDOCCINO mark constitutes a use in
commerce of a word, term, name, symbol, or device, or some combination thereof, or a false
designation of origin, false or misleading description of fact, or false or misleading
representation of fact, which is likely to cause confusion or mistake, or to deceive as to the
affiliation, connection, or association among and between the parties and their respective
services, or confusion or mistake as to the origin, sponsorship, or approval among and between
the parties and their respective services.
58.
Obsidian has no right, license, or authority to use Starbucks FRAPPUCCINO mark or any
59.
Obsidians acts are intended to reap the benefit of the goodwill that Starbucks has
built up in its FRAPPUCCINO mark and constitute infringement of Starbucks trademark,

unfair competition, and false designation of origin in violation of Section 43(a) of the Lanham
Act, 15 U.S.C. 1125(a).
60.
Starbucks will suffer further harm to its trademark, reputation, and goodwill. This harm
constitutes an injury for which Starbucks has no adequate remedy at law.
FOURTH CLAIM FOR RELIEF
False Advertising Under 15 U.S.C. 1125(a)
61.
14
B4492195.5
62.
Obsidians use of the registered trademark symbol, , in connection with its
FREDDOCCINO mark, Obsidians use of Fair Trade Certified signage in its U.S. Coffee
Culture stores, and Obsidians online claim to offer fair trade . . . coffee constitute use in
commerce of a word, term, name, symbol, or device, or some combination thereof, or a false or
misleading description of fact, or a false or misleading representation of fact, in commercial
advertising or promotion, that misrepresents the nature, characteristics, qualities, or geographic
origin of Obsidians goods, services, or commercial activities. Upon information and belief,
Obsidians actions misrepresent the nature, quality, characteristics, and/or source of its goods to
consumers, and are material to, and likely to influence, consumers purchasing decisions.
63.
faith, and undertaken with knowledge that Obsidians FREDDOCCINO mark is not registered in
the United States and that Coffee Culture does not offer Fair Trade Certified coffees in all of its
stores bearing the Fair Trade Certified signage.
64.
Obsidians acts constitute false or misleading descriptions of fact or false or
misleading representations of fact in violation of Section 43(a) of the Lanham Act, 15 U.S.C.
1125(a).
65.
Starbucks is a direct competitor of Obsidian. Upon information and belief,
Obsidians misrepresentations described above are likely to mislead consumers about the nature,
quality, characteristics, and/or source of its products and divert customers from Starbucks to
Obsidian. Starbucks has been, is now, and will be irreparably injured and damaged by
Starbucks will suffer further harm. This harm constitutes an injury for which Starbucks has no
adequate remedy at law.
15
B4492195.5
FIFTH CLAIM FOR RELIEF

Trademark Dilution Under New York General Business Law 360-1
66.

67.
The FRAPPUCCINO mark is inherently distinctive and, as a result of extensive
promotion and use over many years, the FRAPPUCCINO mark has become well-known to
consumers in the State of New York as exclusively associated with Starbucks and as a singular
designation of the source of Starbucks goods.
68.
Obsidians conduct alleged herein is diluting, blurring, and/or tarnishing the
distinctive qualities of Starbucks FRAPPUCCINO mark in violation of Section 360-l of the

General Business Law of the State of New York.
69.
SIXTH CLAIM FOR RELIEF
Common Law Trademark Infringement and Unfair Competition
70.

71.
Obsidians aforesaid conduct constitutes common law trademark infringement
and unfair competition under the common law of the State of New York.
72.
16
B4492195.5
SEVENTH CLAIM FOR RELIEF

Deceptive Business Practices Under New York General Business Law 349
73.

74.
By using the registered trademark symbol, , with its FREDDOCCINO mark,
displaying Fair Trade Certified signage in its U.S. Coffee Culture stores, including stores
located in the State of New York, and claiming on its website to offer fair trade . . . coffee,
Obsidian has engaged in activities that deceive or have a tendency to deceive a material segment
of the public to which Obsidian has directed its marketing activities. Upon information and
belief, Obsidians actions misrepresent the nature, quality, characteristics, and/or source of its
goods to consumers, and are material to, and likely to influence, consumers purchasing
decisions.
75.
Upon information and belief, through such deceptive acts, Obsidian has engaged
in consumer-oriented conduct that has affected the public interest of New York and has resulted
in injury to consumers and harm to the public in the State of New York.
76.
Upon information and belief, Obsidians conduct is willful and undertaken with
knowledge that Obsidians FREDDOCCINO mark is not registered in the United States and that
Coffee Culture does not offer Fair Trade Certified coffees in its stores located in the State of
New York.
77.
By virtue of the foregoing, Obsidian has engaged in deceptive acts or practices in
the conduct of its business in violation of Section 349 of the General Business Law of the State
of New York.
78.
17
B4492195.5
Obsidian. Obsidians conduct has caused and is causing irreparable injury to Starbucks and,
unless enjoined by the Court, will continue both to damage Starbucks and to deceive the public.
This harm constitutes an injury for which Starbucks has no adequate remedy at law.
EIGHTH CLAIM FOR RELIEF
False Advertising Under New York General Business Law 350
79.

80.
Obsidians use of the registered trademark symbol, , in connection with its
FREDDOCCINO mark, Obsidians use of Fair Trade Certified signage in its U.S. Coffee
Culture stores, including stores located in the State of New York, and Obsidians online claim to
offer fair trade . . . coffee constitute advertising that is misleading in a material respect. Upon
information and belief, Obsidians actions misrepresent the quality, characteristics, and/or source
of its goods, and are material to, and likely to influence, consumers purchasing decisions.
81.
Upon information and belief, through such false advertising, Obsidian has
engaged in consumer-oriented conduct that has affected the public interest of New York and has
resulted in injury to consumers and harm to the public in the State of New York.
82.
faith, and undertaken with knowledge that Obsidians FREDDOCCINO mark is not registered in
the United States and that Coffee Culture does not offer Fair Trade Certified coffees in its stores
located in the State of New York.
83.
By virtue of the foregoing, Obsidian has engaged in false advertising in the
conduct of its business in violation of Section 350 of the General Business Law of the State of
New York.
18
B4492195.5
84.
Obsidian. Obsidians conduct has caused and is causing irreparable injury to Starbucks and,
unless enjoined by the Court, will continue both to damage Starbucks and to deceive the public.
This harm constitutes an injury for which Starbucks has no adequate remedy at law.
WHEREFORE, Plaintiff Starbucks Corporation d/b/a Starbucks Coffee Company
demands judgment as follows:
1.
Enter judgment in favor of Starbucks on all counts;
2.
Enter a preliminary and permanent injunction restraining Obsidian and its
officers, directors, employees, agents, affiliates, successors, assigns, franchisees, licensees, and
all those in privity or acting in concert with them:
a.
From in any way diluting, using, displaying, advertising, copying,

imitating, or infringing upon the FRAPPUCCINO mark, including by
using the FREDDOCCINO mark;
b.
From using or displaying the FRAPPUCCINO mark or confusingly

similar variations thereof, including without limitation the
FREDDOCCINO mark, on or in connection with any products or in any
written, oral, or audiovisual advertisements, displays, signs, sales
promotions, the Internet, or in any other public communication in
connection with Obsidians goods or services;
c.
From otherwise diluting or infringing upon Starbucks FRAPPUCCINO

mark;
d.
From using the registered trademark symbol, , in connection with the

FREDDOCCINO mark;
e.
From using Fair Trade Certified signage or otherwise claiming that it

offers Fair Trade Certified products in its Coffee Culture cafs; and
f.
From otherwise unfairly competing with Starbucks;
19
B4492195.5
3.
Order that Obsidian account and pay over to Starbucks all gains, profits, and
advantages derived from the conduct alleged herein, pursuant to 15 U.S.C. 1117 and other
applicable law;
4.
Order that Obsidian pay Starbucks the damages that Starbucks has sustained by
reason of the conduct alleged herein;

5.
Order that Obsidian pay Starbucks enhanced damages as provided by 15 U.S.C.
1117 and other applicable law;

6.
Order that Obsidian pay pre-judgment interest on Starbucks damages as provided
by 15 U.S.C. 1117 and other applicable law;

7.
Order that Obsidian pay the costs of this action as provided by 15 U.S.C. 1117
and other applicable law;

8.
Order that Obsidian pay Starbucks attorneys fees as provided by 15 U.S.C.
1117 and other applicable law; and

9.
Grant such other and further relief as is just and proper.
20
B4492195.5

Starbucks v. Obsidian Group - Freddoccino PDF

Caricato da

Informazioni sul documento

Descrizione originale:

Titolo originale

Copyright

Formati disponibili

Condividi questo documento

Condividi o incorpora il documento

Opzioni di condivisione

Hai trovato utile questo documento?

Questo contenuto è inappropriato?

Copyright:

Formati disponibili

Starbucks v. Obsidian Group - Freddoccino PDF

Caricato da

Copyright:

Formati disponibili

Case 1:16-cv-00029 Document 1 Filed 01/11/16 Page 1 of 21

Julia Huston (jhuston@foleyhoag.com)

Civil Action No.

Starbucks is a purveyor of high-quality coffee and other beverages. Starbucks

Case 1:16-cv-00029 Document 1 Filed 01/11/16 Page 2 of 21

Obsidians conduct is diluting the distinctive quality of Starbucks famous

In addition, Obsidian displays its FREDDOCCINO mark with the registered

trademark symbol, , although it owns no U.S. registrations for FREDDOCCINO. Obsidian

Obsidians unlawful actions are causing immediate and irreparable harm to

Plaintiff Starbucks is a Washington corporation with its principal office at 2401

Utah Avenue South, Seattle, Washington 98134.

On information and belief, defendant Obsidian is a Canadian corporation with a

Case 1:16-cv-00029 Document 1 Filed 01/11/16 Page 3 of 21

Venue is proper in this district pursuant to 28 U.S.C. 1391 because a substantial

Starbucks is a leading purveyor of fine Arabica coffee. The company, which

Starbucks has developed a strong reputation for fresh-roasted specialty coffees,

Case 1:16-cv-00029 Document 1 Filed 01/11/16 Page 4 of 21

In addition to offering high-quality products and services, Starbucks is committed

standards set by Fairtrade Labelling Organizations International (FLO). Specifically, in the

Since 1991, Starbucks and its predecessor-in-interest have used the

FRAPPUCCINO mark in connection with coffee and other beverages. As documented in

Goods and Services

Case 1:16-cv-00029 Document 1 Filed 01/11/16 Page 5 of 21

Goods and Services

Restaurant, cafe, cafeteria, snack bar, coffee bar and coffee

Coffee, tea, cocoa and espresso beverages, and beverages

Patent and Trademark Office.

FRAPPUCCINO is a coined mark, invented by Starbucks predecessor as a

than $1.5 billion in sales of FRAPPUCCINO handcrafted blended beverages.

Case 1:16-cv-00029 Document 1 Filed 01/11/16 Page 6 of 21

Starbucks retail locations prominently display the FRAPPUCCINO mark on

Case 1:16-cv-00029 Document 1 Filed 01/11/16 Page 7 of 21

As a result of the extensive and prominent use described above, the

Outside of Starbucks stores operated either directly by Starbucks or by its

licensees, customers can enjoy FRAPPUCCINO blended beverages at select third-party

To distinguish a foodservice account from a Starbucks store, Starbucks

Starbucks is highly selective in choosing which foodservice accounts it will

Case 1:16-cv-00029 Document 1 Filed 01/11/16 Page 8 of 21

Foodservice accounts may serve a number of products, including brewed coffee,

espresso-based beverages, hot cocoa, and FRAPPUCCINO blended beverages. Starbucks

Authorized foodservice accounts undergo rigorous training and are subject to

Starbucks quality and brand guidelines.

As a result of Starbucks licensing to foodservice accounts, consumers are

Case 1:16-cv-00029 Document 1 Filed 01/11/16 Page 9 of 21

On information and belief, the FREDDOCCINO mark is a portmanteau of the

Italian word freddo (meaning cold) and cappuccino.

The FREDDOCCINO mark is similar to Starbucks famous FRAPPUCCINO

In addition to the confusingly similar FREDDOCCINO name, Obsidian further

Case 1:16-cv-00029 Document 1 Filed 01/11/16 Page 10 of 21

Starbucks FRAPPUCCINO beverage

Defendants FREDDOCCINO beverages

Upon information and belief, the quality of Obsidians FREDDOCCINO

Obsidian displays the registered trademark symbol, , with its FREDDOCCINO

Case 1:16-cv-00029 Document 1 Filed 01/11/16 Page 11 of 21

The similarity between the FRAPPUCCINO and FREDDOCCINO marks in

appearance, sound, and connotation diminishes the capacity of Starbucks famous

Upon information and belief, Obsidians use of the FREDDOCCINO mark is

Upon information and belief, a consumer purchasing a FREDDOCCINO

Upon information and belief, as a result of Obsidians actions, consumers seeking

Case 1:16-cv-00029 Document 1 Filed 01/11/16 Page 12 of 21

FIRST CLAIM FOR RELIEF

foregoing paragraphs of this Complaint.