What’s the first thing that comes to mind when you hear the word “Charbucks?” If it’s coffee—and it probably is—ask yourself what the answer would have been 20 years ago, just before the iconic and ubiquitous coffee giant Starbucks opened its first store in New York City. If Starbucks is so firmly linked to coffee in your mind that even a quite different word, like “Charbucks,” can bring up the same connections, you can bet that association didn’t come cheap. In fact, Starbucks has spent billions of dollars establishing its name as synonymous with premium coffee and related products, and it has been enormously successful in doing so. The result of these efforts is that its brand name has achieved the most coveted position available under U.S. trademark law: It is famous.

Under U.S. trademark law, “a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.”1 The test, in this context, is a stringent one that requires a strong, well-established connection in the minds of consumers across the country—particularly if the mark is a common word. Coca-Cola is the usual law school example of a “famous” mark, and some well-known brands (such as Coach leather goods) have failed the test. A mark that is “famous,” however, is entitled to special protection beyond traditional trademark infringement.

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