Doubleshot coffee in Tulsa

[joiei]

There is a little coffee shop in Tulsa called Doubleshot Coffee where they roast their own beans and have developed a loyal local clientel. Now, they are being told that they have to cease and desist using doubleshot in their name and on any of their materials. Apparently, Starbucks has decided that they own the name Doubleshot. A local television station is following the story closely.

Starbucks Doubleshot comes in a can. Then there is a doubleshot of espresso. Starbucks says customers might not be able to tell the difference between their product and two shots of espresso. Starbuck' lawyers say customers associate the word "doubleshot" with their product, the trademarked "Starbucks Doubleshot" beverage and that Brian's company "threatens to diminish the strong, positive associations between Starbucks and the genuine Starbucks Doubleshot trademark."

Starbucks also wants Brian to take down his company website and destroy cups, shirts and anything with the word “doubleshot” on it.

The lawyer for Doubleshot replies that

you can't trademark descriptive terms like doubleshot, which describes espresso, two shots of espresso.

According to Starbucks

they are required to take action against someone infringing against their trademark. They said “Even where it may seem playful, this type of misappropriation of a company's name is both derivative and dilutive of their trademark rights.”

So does Starbucks really own title to a generic term like this? Does this mean we can only use the term doubleshot when we are ordering that particular can of product and not when ordering a 'doubleshot' at a Starbucks? Will Starbucks get out the coffee cops to stop us from using the term loosely so as to delute their proprietary product?

I didn't know if this was the appropriate place to post this story, it can be moved if deemed proper. Thank you.

[Moopheus]

One technical point Starbucks could claim is that "doubleshot" is not a generic term. Generically, a double espresso is a "double shot". The missing space may seem like a small thing to you and me, but it makes a difference to the lawyers. The argument then becomes whether or not this makes the term sufficiently "distinctive". I wouldn't hazard a guess as to how this will come out, though it would seem by any rational measure that the risk of consumer confusion in this case is virtually nil and that Starbucks is harassing these guys because they can.