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Dec 15 2016

“3:05 Cafecito Time” Case Shows Limits of a Good Idea

I’m sure Jenny Lee Molina, the founder and principal of the Miami public relations firm JLPR, publicist JennyLee Molina, thought she struck gold when she came up with “#305Cafecito” to designate 3:05pm as the official time in Miami to grab a little cup of Spanish coffee (“un cafecito”). After all, 305 is the area code for Miami and walking up to a restaurant’s ventanita (“little window”)for the afternoon cafecito is an Hispanic tradition. The marketing program caught a little fire in the Miami-Dade community and in 2013, Miami Mayor Tomás Regalado designated 3:05pm as the official coffee break time of the City of Miami. It was a great idea for sure.

So imagine her surprise when recently coffee giant Cafe Bustelo began using “3:05pm cafecito” in a series of pop-up activations in cities such as New York, Los Angeles, and Chicago where free coffee was distributed at 3:05 p.m., with signs depicting “305” and “cafecito time” held by attendees. Cafe Bustelo is owned by the J.M. Smucker megacorporation which owns Bustelo, Smucker’s Jam, Folger’s, and Café Pilon. In addition, J.M. Smucker sells coffee under the Dunkin’ Donuts brand in grocery stores across the U.S. and owns the Meow Mix, Kibbles N’ Bits, Milk Bone, and 9 Lives brands plus many others.

This past October, Molina asked the J.M. Smucker Company to properly recognize JLPR asking for creative credit. She told them that
she monetizes 3:05 Cafecito by using it as a marketing vehicle for events and using it as a social media influencer with other brands that she promoted on a 3:05 Cafecito channel.The Smucker Company was not impressed with her claim. They responded through their lawyer that they were not claiming trademark rights to 3:05 Cafecito as the term is merely descriptive to tell their followers at what time they will be offering a free cafecito at selected locations. What’s worse is they used JennyLee’s own success against her:

Our research shows that 3:05 p.m. has been recognized as “Miami’s official cafecito time” following the mayor’s proclamation in 2013. We do not believe that anyone has exclusive rights in celebrating a coffee moment at 3:05 p.m. To claim otherwise seems contrary to the idea of sharing pride in the afternoon cafecito ritual as a way to honor the Latin culture in Miami.

That’s right – they threw back in her face that since the Mayor proclaimed 3:05pm as the official coffee break time of Miami, the “305 Cafecito” movement stopped being a privately held trademark and instead became a generic term. But of course, 3:05pm was only selected by JennyLee as a clever use of Miami’s area code. There was no natural tradition of having a coffee at exactly 3:05 pm. And its just plain smarmy nonsense to claim that they are doing it to “share pride” in Latin culture in Miami. There can be no serious dispute that JM SMucker got the idea from JennyLee. Her and her company are named in the Mayor’s 2013 Proclamation. But that’s not enough under trademark law. Here’s another important passage from JM Smucker’s response letter:

“cafecito” and “cafecito time” are generic terms that are not subject to trademark protection, and 305 is geographically descriptive as a reference to the telephone area code of Miami, Florida, and also not protectable. In fact, the USPTO has required a disclaimer of exclusive rights to the terms “cafecito” and “305” in numerous third party registrations.

Smucker’s lawyer is likely right. There is nothing unique or fanciful about “305 Cafecito.” And while it may have been popular in Miami, it hardly was a national concept or household term. And that’s essentially what JennyLee would have to prove to be able to stop Smucker’s from using her idea – that it acquired “secondary meaning” under trademark law. Under trademark law, a mark associated with a marketed product generally cannot receive full trademark protection unless it is distinctive. Think about trademarks like “Exxon” or “Motrin” These are not real words; they do not describe the product or its use; they don’t just use a proper name or a geographical location. They are called “fanciful” because someone created them out of their imagination. Trademark protection gives the holder of a distinctive mark the exclusive right to use that mark in connection with a product. The mark is placed in the principal register of trademarks in the US Patent and Trademark Office. Descriptive and generic marks ordinarily do not qualify for the principal register. A person may not, for example, claim the right to the word “nice” in connection with a product because the word is merely descriptive. A descriptive or generic mark may, however, be placed on the supplemental register, which gives the holder of the mark a certain measure of trademark protection. If the mark acquires a secondary meaning after five years of continuous, exclusive use on the market, the mark may be placed on the principal register.

Trademark-SymbolA descriptive or generic mark attains a secondary meaning if the producer so effectively markets the product with the mark that consumers come to immediately associate the mark with only that producer of that particular kind of goods. Think of “Just Do It” – Nike’s trademark. That’s a common English phrase that is not distinctive. So to protect it, Nike made sure to roll it out in a national multi-million dollar ad campaign. They put “Just Do It” on billboards, TV and radio; they put it on every label of Nike clothes shipped out at the start of the campaign; they placed ads in just about every print magazine in the country. It was not long before “Just Do It” became synonymous with Nike so that when you hear it, you no longer think of the actual phrase but you think of Nike – “Just Do It” has acquired a secondary meaning. The other issue JennyLee has is that she is not even in the business of selling coffee, so Smucker’s and her are not really competitors. In her trademark application, she listed dozens and dozens of products that she used or intended to use 305 Cafecito on: coffee mugs, bumper stickers, adhesive tape and and so on. But “coffee” was not on the massive list. If she had a national coffee brand called “305 Cafecito” she would have a much better chance of stopping the Smucker’s campaign. I noticed in searching the USPTO records that in July 2016 someone applied for the trademark “Cafecito 305” in connection with the sale of coffee, coffee beans and ground coffee.

In the Miami New Times’ article about the case, JennyLee is quoted as saying:

“If they would have done a post saying to join the #busteloexperience and drink coffee at 3:05 p.m., brought to you by 3:05 Cafecito, I would have been more than fine. At the very least, they could have corrected what happened, but what they did was take a stance that my idea is not my idea, and that’s why I’m upset. It’s not fair. They gain nothing and lose nothing by giving us credit

JennyLee is missing the point: They are not disputing that its her idea really; they are disputing that her idea is protectable, because it is generic and not distinctive and because its just an idea and not a product. She is right however that Smuckers really had no reason to not give JennyLee accreditation. They likely did a quick assessment of the strength of the trademark (or lack thereof) and determined that it was not protectable, so why not use it? They also likely assessed the likelihood of a small Miami PR firm taking on one of the largest conglomerates in the world in a trademark lawsuit. JennyLee is trying to get their attention by starting a #boycottbustelo campaign but so far it has not had much in the way of activity. I wish her luck but I think this will be an uphill battle.

Follow me on Twitter @oscarmichelen

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