On Tuesday, May 30th, North Attleborough, MA-based local news outlet The Sun Chronicle reported that a local coffee shop was the target of a cease-and-desist letter sent by Canton, MA-based quick service restaurant provider Dunkin’ Donuts (NASDAQ:DNKN). According to the report, Dunkin’ Donuts alleged that a slogan used by Mike’s Coffee constituted trademark infringement and dilution and could cause consumer confusion.
Dunkin’ Donuts allegations center around a message displayed on windows at the Mike’s Coffee location: “North Now Runs On Mike’s”. Although Steve Copoulos, the owner of Mike’s Coffee, reportedly did not have Dunkin’ Donuts’ “America Runs On Dunkin’” slogan in mind when putting up the window display at Mike’s Coffee, a letter from Dunkin’ argued that the owner’s actions “are clearly designed to trade in on the goodwill and reputation associated with the America Runs on Dunkin’ trademark,” according to The Sun Chronicle.
In the trademark world, slogans inhabit a bit of a gray area in terms of whether they can be protected by trademarks. To be protectable as a trademark, a slogan must be both inherently distinctive and creative as well as have a secondary meaning which calls a product or service immediately to mind. Unless a slogan has developed that secondary meaning in the mind of the consumer, the trademark protections which can be offered to that slogan are limited.
However, Dunkin’ does hold at least one trademark which protects the use of this specific slogan in commerce. U.S. Trademark Registration No. 3399798 protects the use of the standard character mark “AMERICA RUNS ON DUNKIN’” with restaurant services and carry-out food services. There could be some question as to whether this trademark gives Dunkin’ Donuts the right to exclude others from using any branding which uses this “[place] runs on [noun]” syntax, but it’s possible that the use of the slogan in conjunction with a coffee shop, which could cause consumers to recall Dunkin’ Donuts, as well as the effect of laches on trademark infringement cases, may have compelled Dunkin’ to file the suit.
Previously, Dunkin’ Donuts has tried to brand itself as the “best coffee in America” but that trademark was rejected at the U.S. Patent and Trademark Office in 2012 because “the applied-for mark [was] merely laudatory and descriptive of the alleged merit of applicant’s services and the goods featured therein.” This February, Dunkin’ Donuts settled a trademark infringement suit brought by Heartland Consumer Products, the makers of Splenda artificial sweetener, over allegations that Dunkin’ Donuts failed to communicate to consumers the fact that it no longer served Splenda and would instead provide a Chinese sweetener product which also used yellow packaging.