Case Study: NY State Department of Economic Development v. Coffee Shop

In the following article, we will outline a trademark infringement case involving a coffee shop and agents for the New York State Department of Economic Development. The purpose of this case study is to help illustrate what can happen to businesses and business owners who neglect to conduct a trademark search before deciding to use a word, name, or symbol.

As mentioned in our previous article, a trademark or service mark includes “any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services,” according to the United States Patent and Trademark Office (USPTO).

Who Was Involved:

This trademark infringement case involved Everyman Espresso, a coffee shop in New York’s East Village, the New York State Department of Economic Development, and CMG Worldwide, an agency that protects the trademark of New York’s iconic “I ♥ NY” mark.

Check out our full article on the I Heart NY trademark.

What Was The Issue:

After owner Sam Penix opened a coffee shop he named Everyman Espresso, he created a logo for his business that included the phrase “I [a red coffee cup icon] NY”. The logo also included a cartoon of a tattooed fist grasping a coffee-filled portafilter. According to an article in the New York Times, the logo “said everything Mr. Penix meant for the shop to stand for: an in-your-face passion for New York City and for fine coffee.”

In May 2013, Mr. Penix received a letter from agents for the Department of Economic Development in New York in regards to the logo he was using for his coffee shop and merchandise. The letter stated that Everyman Espresso’s unauthorized and confusingly similar use of the “I ♥ NY” logo violated federal trademark law.

What Did They Argue:

According to the letter Mr. Penix received, agents argued that the use of the Everyman Espresso logo implied “a misleading designation of source, origin, endorsement, sponsorship or approval” by the New York State Department of Economic Development of their merchandise.

As mentioned in our first trademark law case study, “likelihood of confusion” is the central focus of any trademark infringement claim. A section of an article about trademark infringement on the Cornell University Law School website reads, “A likelihood of confusion exists when consumers viewing the allegedly infringing mark would probably assume that the product or service it represents is associated with the source of a different product or service identified with a similar mark.”

Although the red coffee cup in the Everyman Espresso logo does not resemble the red heart of the “I ♥ NY” logo, federal law still prohibits companies from using any part of the protected trademark that is likely to cause consumer confusion.

Related: Our guide to trademarking a logo.

What Was At Stake:

The original “I ♥ NY” logo was created by graphic designer Milton Glaser in the 1970s. Since then, numerous other states and countries around the world have been creating and using unauthorized variations of the iconic logo to boost tourism. In an effort to protect the strength of their popular tourism and advertising logo, Agents for New York’s Department of Economic Development have sent thousands of trademark objections and cease-and-desist letters to businesses across the world who infringe on the trademark. For any business or organization, defending a registered trademark is an essential part of preventing the dilution of their brand reputation.

What Happened:

After Mr. Penix received the cease-and-desist letter from agents on behalf of the New York Department of Economic Development, he removed the logo from his website, removed all merchandise from his coffee shop, and sent a reply promising to cease all use of its mark. The logo has since been updated on his website and storefront. It now includes a “Censored” sign over the logo where the “I [red coffee cup icon] NY” phrase used to be.

In a reply letter back to Mr. Penix, CMG Worldwide attorney Clare Neumann next requested “an accounting of all gross revenues generated during the period when the I ♥ NY® Trademark was used” to help her set the appropriate penalty for infringing on the mark. According to the New York Times article, Mr. Penix is doing everything he can to comply with the requests.

The Law Office of Xavier Morales can help you begin your trademark search today. Just click here to learn more about our Comprehensive Trademark Search & Filing Service. The purpose of the Comprehensive Trademark Search is to determine whether your name, logo or slogan is in fact available for you to use and to register as a trademark for your business.

Xavier Morales, Esq.

About the Author:

Xavier Morales, Esq.

Mr. Morales founded this trademark law practice in January 2007 with the goal of providing intellectual property expertise to entrepreneurs and businesses around the country. Since then, he has filed more than 6,000 trademarks with the USPTO. You can learn more about Xavier here.

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