Intellectual Property Law

Would Smith's Owner Have Had a Claim for Trade Dress Infringement?

By Michael Atkins

It’s not going to turn into a lawsuit, but check out the photos below of Seattle’s Smith bar and Starbucks’ adjacent 15th Street Coffee & Tea, which opened on Friday. Smith owner Linda Derschang initially cried foul about Starbucks’ design, saying it copied the look-and-feel of her neighborhood pub. However, she changed her mind, saying the differences in the parties’ offerings would help avoid harm.

Outside, both establishments have the same brownish-grey exterior color and similar (but differently colored) awnings. Inside, both have a lot of exposed wood (including bars, tables, and chairs) and share a rustic feel. Both have hanging lamps, exposed wood beams, exposed electrical work, and exposed duct work. Perhaps most notably, both have display signs consisting of chalkboards framed in reclaimed wood and large wood-framed antique paintings. Both establishments sell beer and wine. Both offer food, though Smith offers pub fare and 15th Street most prominently offers baked goods.

For the sake of discussion, would all this add up to a successful claim of trade dress infringement? Remember, to be protectable, trade dress needs to be nonfunctional (e.g., every bar has tables, chairs, a bar, and a cash register, so those features don’t count) and distinctive (either because the trade dress is “suggestive,” “arbitrary,” or “fanciful,” or because the trade dress is “descriptive” and has acquired distinctiveness through secondary meaning). And to be actionable, the later adopter’s use of similar trade dress needs to be likely to confuse consumers into believing some association exists with the senior adopter (in this case, that 15th Street has something to do with Smith, like has a common owner or that Smith’s owner approved Starbucks’ use of a similar design).

Taking all this into account, would Smith’s owner have had a valid claim?

Exteriors of Smith (left) and Starbucks’ new 15th Street Coffee & Tea
(with open door at middle right). (Photo by STL)

Interiors of Smith (top) and 15th Street Coffee & Tea. (Photos by STL)

Full post as published by Seattle Trademark Lawyer on July 27, 2009 (boomark / email).