Santa Ana, CA – Plaintiff Planet Coffee Roasters, Inc. filed a trademark infringement, Lanham Act § 43(a), and dilution claim against Garden Grove, California based Defendant Planet Coffee. Plaintiff alleges that it has been using the Planet Coffee trademark since 1993 on coffee beans and services related to coffee, with “a majority of its sales of its products and services in and around the California geographic region, including Orange County, California.” This statement defeats Plaintiff’s cause of action for trademark dilution because the Trademark Dilution Revision Act of 2006 limited dilution causes of action to nationally famous marks.
Unfortunately for Plaintiff, cups of bitter refills are sure to follow. Plaintiff never registered its trademark with the USPTO and only recently filed a word mark and a design mark application. Both applications, however, have been refused registration based on two 1995 registrations owned by Souper Salad, Inc. for Planet Coffee® and Planet Coffee® plus design. Plaintiff is now going to have an uphill battle establishing ownership of its alleged trademarks. The case is Planet Coffee Roasters, Inc. v. Planet Coffee, SACV 09-571 MLG (C.D. Cal. 2009).