Info/Law

One of my former Trademarks students, Sonja Markwart, notes that local coffee chain Beaner’s Coffee is changing its name to Biggby Coffee (does the extra G stand for “extra good”?). Why? Turns out “beaner” is a slur (though not a well-known one) that maligns Hispanics. (I didn’t know this, and I drove in Boston traffic for ten years, so I’ve been exposed to virtually every extant derogatory remark.) The alteration lets the company keep its logo - a black B in an orange box - although whether loyal customers will be confused is still an open question. It’s costing the company a cool million bucks to re-brand.

Legally, this may be a smart move. Beaner’s owns 3 federally-registered trademarks on the name (Reg. Nos. 3171628, 75585311, and 75549742 - you can search the PTO’s database.) As my current students are learning, one may not register a mark that “[c]onsists of or comprises… matter which may disparage… persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” (15 U.S.C. 1052(a)) Such marks are subject to cancellation under Section 14 of the Lanham Act (15 U.S.C. 1064) - witness the fight over the Washington Redskins team name. While this wouldn’t prevent Beaner’s from using the name, it would reduce the chain’s protection against competitors who use confusingly similar monikers. (If I open a java franchise called “Neener’s,” it would be harder for Beaner’s to sue me, though Section 43(a) claims for unregistered marks would still putatively be available.) Hence, the chain may be smart to switch names rather than potentially risking an embarrassing, and probably losing, legal battle.

There are harder policy questions here: should the Patent and Trademark Office attempt to screen for offensive / immoral / scandalous terms? (The statute currently mandates that the PTO do so, but is this the right normative choice?) Is it better for one entity to have a monopoly over an offensive term, or for it to be open to anyone’s use? Does registration confer governmental imprimatur on an offensive mark? (At minimum, registering it seems to suggest, by negative implication, that the mark isn’t scandalous, immoral, or disparaging.) These are tough issues, and TM scholars (and students) disagree. I’d be interested in your take in the Comments.

Kudos to Sonja for spotting this issue (must be why she did well in the class!), though of course she’s not responsible for my goofy analysis.

Bonus quote: Beaner’s CEO Bob Fish states that “That just doesn’t really fall within our mission to have a name that is derogatory.” Are there businesses that do have a mission involving derogatory names? (Yes, actually.)

Beaner’s Biggby has an outlet in my new home city of Southfield - I’m off to grab a cup now. Update: The Southfield outlet, on Evergreen Road near Civic Center Drive, has really nice people, good coffee, and free wi-fi! Take that, Starbucks!

Filed under: Law School, Trademarks