Dunkin’ v. Vapin
Dunkin filed a suit against an e-cigarette company’ for infringing Dunkin’s trademark. Dunkin’ asserts that the e-cigarette company “Vapin” essentially took Dunkin’s style and color from their trademark and replaced the word “Dunkin’” to “Vapin.” This case has the potential to help show a clear case of what the likelihood of confusion analysis of trademark infringement looks like.
Dunkin’, the coffee chain, accused an e-cigarette maker of infringing on its trademark. Claiming that the New York based company “Singh Handicraft Corp.” marketed its product with a “nearly identical” trade mark that violates Dunkin’s trademark, Dunkin’ asserted that “the distinctive orange and pink color scheme and rounded font” are identical, with the exception of the word “Vapin” instead of “Dunkin’.” Furthermore, Dunkin’ asserts that Vapin’s e-cigarette flavors are “identical” to Dunkin’s coffee flavors. Dunkin’ is concerned that this could confuse its customers into believing that the two brands may be related to one another. To make matters worse for Vapin, Dunkin’ alleges that “Defendants were aware of Dunkin’ and its exclusive rights in the Dunkin’ marks when they began selling their products under the infringing mark – without license or consent from Dunkin’.” Dunkin’ also provided evidence of Vapin’s marketing strategy that further pointed to Vapin’s use of infringement of Dunkin’s trademark , as Vapin created an Instagram account that was called “VAPIN_DONUTS_,” with posts containing hashtags such as “#coffee” and “#donutsforlife.”
These facts do not bode well for Vapin. The Eastern District Court of New York will analyze this case of infringement under the Lanham Act to determine whether Vapin violated Dunkin’s trademark. The Lanham act provides that “the plaintiff must demonstrate that (1) it has a valid and legally protectable mark; (2) it owns the mark; and (3) the defendant’s use of the mark to identify goods or services causes a likelihood of confusion.” In Dunkin’ Donuts, Inc. v. N. Queens Bakery, Inc., Dunkin’ easily demonstrated valid ownership of its trademark, as it will have to in this case against Vapin to show legitimate ownership of the trademark. It is likely that Dunkin’ will prevail against Vapin on the last factor, as these facts seem to present a classic case showing likelihood of confusion. A prior case, Dunkin’ Donuts Franchised Rests. LLV v. Elkhatib, which had similar facts, resulted in a preliminary injunction against the defendant.
In determining the likelihood of confusion, one can look to the Dupont Factors. The Dupont Factors, used by the United States Patent and Trademark Office (USPTO), determine whether a mark would be confused with another mark. These factors can help determine the outcome of cases such as this one. The Dupont factors include: similarity or dissimilarity of marks, nature of the goods and services, trade channels use, purchasing conditions, fame of the existing mark, similar marks with similar goods, actual confusion between the marks, length and conditions of concurrent use without confusion, variety of goods and services associated with the marks, market interface, applicant’s right to exclude others, extent of potential confusion, as well as other established facts.
Using these factors, it seems likely that Vapin will be found to violate Dunkin’s trademark. Without going into every single one of the Dupont Factors., the first factor, “similarity or dissimilarity of the marks,” will likely favor Dunkin’. Dunkin’s mark is nearly identical to the mark that Vapin is now using. The marks are identical notwithstanding the fact the words are different. The styling, shapes, and the colors are the same. Dunkin’ will also likely be able to show it is a well-known brand with a high level of fame. A 2018 survey found that almost one in four Americans between ages 30-49 has been to a Dunkin’ within the last three months.
Another Dupont Factor that may be harder for Dunkin’ to prove is actual confusion. Dunkin’ may have to provide more information to support consumer confusion between the marks. Conversely, Vapin may be able to easily show that the purchasing conditions and nature of goods and services are different. The purchase of coffee is different from the purchase of e- cigarettes in both the nature of the product and the manner in which consumers purchase them. It may be possible for Vapin to show that there is no confusion, although this may be somewhat difficult to show due to the close proximity of the previously stated similarities of the marks used by Dunkin’ and Vapin respectively.
Overall, this case has the potential to show a prime example of nearly identical marks creating confusion across industries, or demonstrate the ability of a brand to continue to use a mark despite its similarities with another mark. If the latter is the outcome, this case could draw a line in trademark law with regards to the analysis of likelihood of confusion.