Starbucks vs. Sambucks Coffee

ByABC News
December 9, 2005, 4:15 PM

Dec. 9, 2005 — -- Starbucks, the giant chain that sells huge amounts of ridiculously expensive coffee, is picking on a little guy.

On the coast of Oregon where the Columbia River meets the Pacific, sits the small town of Astoria, population 10,000. Up here, when people want their coffee they often head to a little shop run by Sam Buck. Buck grew up here, went to the local high school and bought a tiny coffeehouse and named it Sambucks, using her name for the store.

Buck is actually her maiden name. When she married in 1993 she became Sam Lundberg but she used her maiden name for the shop because around Astoria, she says, everyone knows her by that name.

"When I bought the coffee shop, there were no Starbucks within 100 miles," she said.

You can guess what came next. When Starbucks discovered she was using the name Sambucks, they sent her a letter and told her to stop.

"I was in shock. I thought, is this real? I mean, they're attacking me?" said Buck.

She says she ignored Starbucks' cease-and-desist letter. After all -- Sam Buck was her name. No one was going to tell her she couldn't use her name. So Starbucks sued her for trademark infringement. Sambucks? Starbucks? They said people would get confused.

Would they really? I'm getting confused.

When I go into the Starbucks by my office, it's distinctively, well, Starbucks. It's big. There's a certain color scheme that you find at many of their locations and there are lots of tables where people sit and log on to the Internet.

Sambucks doesn't look like a Starbucks. It's only 10 feet wide. It's clearly a small-town business. Sam even delivers coffee to neighboring stores that want it. Starbucks won't do that. And Sambucks sells things like beef jerky. You won't find that at Starbucks.

One Sambucks customer told us, "I just can't imagine anyone could be confused between the two, and I don't see how this possibly could be a threat to a corporation that big."

Good point. Starbucks wouldn't talk to me about this, but before I could say Give Me a Break to them, I went to a trademark lawyer and asked if this is unreasonable on Starbucks part.

"If you look into what is at stake in trademarks, it's actually not unreasonable and it probably was a wise choice for Starbucks to, to sue in this case," said Fordham University law professor Hugh Hansen.

The Sambucks case is not the first time Starbucks has fought to preserve its trademark. In 2003, Starbucks sued Haidabucks coffee in remote Canada. Last year, they sued Starbock beer and got them to limit their sales to one county in Texas. But Sambucks doesn't appear to be a threat to Starbucks. She's got one little 10-foot-wide shop. So why is Starbucks so concerned?

"If you think of a leech on an animal, one leech, if you leave that leech on, the animal won't survive," said Hansen. "If you don't take that off each time they come and you allow them to accumulate on the animal, the animal could actually become very sick or die."

Leeches?! It's about setting a precedent, he says. If they don't stop her, it's hard to stop the next one. And big money is at stake. Aspirin was once a brand name so was thermos, trampoline, cube steak, cellophane, elevator and escalator. The inventor of those products lost their valuable exclusives on those names because they fell into common use.

"You have to police your mark," said Hansen. "You have to keep it exclusive. If it's not exclusive and other people are using it, the strength of your mark deteriorates."

Still, some of these trademark lawsuits are ridiculous. Bill Wyman, the comatose-looking bass player of the Rolling Stones had a lawyer send a cease-and-desist order to journalist Bill Wyman saying he should stop using his own name when he wrote about music.

I recently reported on Fed Ex, who sent Jose Avila a cease-and-desist letter because he was using its unique boxes as furniture and then posting pictures of it on the Web. Spike Lee tried to keep the Spike TV network from calling itself Spike, and Smuckers claimed it owned the rights to a peanut butter and jelly sandwich with no crust, demanding a competing company stop selling its version of the product.

Give Me a Break. But GMAB to Starbucks for what they did to Sambucks? I don't know.

Sam had been using her married name Lundberg for seven years until she opened the coffee shop and chose the "Bucks." In this case, Starbucks didn't go the usual lawyer bully route. They first offered Sam Bucks $500 to change the name of her store. She refused. And her logo is similar to the Starbucks green image. Coincidence? A court said no and ruled against Sam.

"She is not the total innocent," said Hansen. "Ultimately, what she is doing is using or associating with someone else's goodwill intentionally. If it was just her own name, I mean why didn't she say Sam, new word, Buck's? That's her name. But she didn't. She got cute."

The judge ordered her to drop the name Buck from everything: her coffee cups, cards and front window.

"People think this is a crock of crap," said Buck.

Me too. I'm just not sure where it's coming from. Or what comes next.

Take, for example, Starbuck, a character in Battlestar Galactica. Maybe Starbucks should sue him? Or maybe the original Starbuck in Moby Dick should sue Starbucks. There's a dog grooming store not far from my house named Starbarks. Starbucks hasn't sued them -- yet.

All this makes me want to say Give Me a Break. I'm just not sure who to say it to?