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21 May 2018

Protecting a ‘Grande’ Brand

With the Starbucks Coffee Company operating in 74 countries and managing a portfolio of nearly 24,000 trademarks, there are many IP challenges for the global brand to tackle, according to Batur Oktay, Director and Expert Senior Counsel at Starbucks Coffee Company (USA).

As the popular coffee chain continues to build its loyal following of customers, Starbucks Coffee Company’s legal team has seen an uptick in infringement—particularly in China, Southeast Asia, Turkey, and Mexico, according to Mr. Oktay.

This includes typical trademark infringement and more counterfeit products, he says. “The company is working hand-in-hand with customs offices around the world to seize and destroy shipments before they have a chance to make it to bricks-and-mortar or virtual stores.”

Typically, Starbucks Coffee Company has a caseload of more than 1,000 active IP matters at any one time, Mr. Oktay says, so lawyers and “rock star paralegals” are hard at work internally. The team also relies on a network of outside counsel to help the brand identify and then tackle IP challenges.

“I would say we are extremely proactive with our filing approach, and we are vigilant enforcers of our rights,” Mr. Oktay declares.

Despite the large volume of branding challenges that Starbucks faces, litigation is never the primary go-to option, according to Mr. Oktay. “We reach out with letters in the first instance, and resort to litigation only if all else fails,” he says.

Although the IP team works across all business units in the company, as “keepers of the brand” they sometimes need to push back in order to best protect the Starbucks Coffee Company name.

Mr. Oktay explains: “Marketers often wish to push the limits of how to represent brands, but we advise them against certain choices where necessary in order to protect and maintain the strength of our marks.”

“Trademark strategy has to be closely aligned with business strategy,” he says, adding that it’s important to stay close to the company’s overall business needs and direction.

“For example, being a very public-facing and often in-the-news company requires that we work closely with the global communications team, among others, to ensure the right story is being told,” he explains.

Serving its Roots

The Starbucks Coffee Company story dates back to 1971, when the company operated in a single narrow storefront in the historic Pike Place Market in Seattle, Washington. “We couldn’t be more proud of our roots, and we’re prouder still to keep serving the people and communities that have been with us from the beginning,” Mr. Oktay says.

He explains that the first store sold coffee, spices, and tea, and the brand’s original logo contained these three words as a tribute to that site. The logo itself harks back to Seattle’s nautical seafaring roots, and “Starbucks” comes from the name of the first mate in Moby Dick, one of the United States’ most famous works of literature.

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