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Coffeehouse chain in Upstate New York says it has grounds to sue Watertown coffeehouse with the same name
By adamg on Thu, 02/22/2024 - 8:54am
Update, 5/28/24: The two sides reported they have reached a settlement and asked a judge to dismiss the case. Terms were not disclosed.
Uncommon Grounds, with four coffeehouses in the greater Albany, NY area, yesterday sued Uncommon Grounds, which has a coffeehouse on Mount Auburn Street in Watertown, for trademark infringement.
In its suit, filed in US District Court in Boston, the New York Uncommon Grounds roasts the Watertown one for continuing to use the name some four years after it demanded a name change.
The Watertown Uncommon Grounds says it's been using that name since 1998, but the New York one says that doesn't amount to a hill of beans, because it's been around since 1992 - and got a federal trademark on the name in 2005. The Watertown coffeehouse is causing "serious and irreparable injury" to the New York ones by confusing consumers, the complaint alleges.
Trademark aficionados might bring up the Dawn Donut rule, that two enterprises can exist with the same name if they are limited to distinct geographic locations that don't overlap, for example, Saratoga, NY and Watertown, MA. The New York Uncommon Ground, however, pours some cold brew on that, saying it has plans to expand into Massachusetts.
The New York Uncommon Ground seeks a judicial declaration that the Watertown Uncommon Ground should knock it off right away, pour out anything marked "Uncommon Ground" and pay a whole latte in damages, times three.
Neighborhoods:
| Attachment | Size |
|---|---|
 Complete complaint | 439.55 KB |
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Comments
LOL
Best headline ever
Prior use
The Watertown coffeehouse has been using the name since before the federal trademark was registered, so good luck with that. Even if the Albany chain plans to expand to Massachusetts, 1998 is still before 2005.
The USPTO scoped it to:
The USPTO scoped it to:
"Registration limited to the area comprising the District of Columbia and the states of Maine, New Hampshire, Vermont, Massachusetts, Rhode Island, Connecticut, New York, New Jersey, Pennsylvania, Delaware, Maryland, Virginia, West Virginia, North Carolina, South Carolina, Georgia, Florida, Alabama, Mississippi, Louisiana and Texas. Concurrent Use Proceeding No. 94002021 with 74/525,862."
which is a weird area, especially for a small coffee shop chain with four locations in the NY Hudson Valley area. I'm wondering what the USPTO examiner was thinking when they granted it.
What's the specific claim of harm?
If it isn't that the Watertown location is watering down the Uncommon Ground name then I don't see how the suit has merit.
Taking a guess
The upstate NY version roasts and sells bagged coffee for delivery. So they might be concerned people will think the Watertown store is using their beans or otherwise attribute a bad experience in MA to the chain in NY.
If the NY location indeed has expansion plans, having another business use the name might complicate their franchise hopes so they are trying to deal with it now.
Also, they could just be litigious jerks.
"Whooosh!"
Read the comment again.
Woosh indeed
Your comment was funny!
Tbf, I'm originally from
Tbf, I'm originally from upstate and when I first moved to Boston I thought it was the same coffee chain. They are very, very popular in NY.
The Watertown coffeehouse is
I was getting a cup of coffee and I ended up in upstate New York, thanks to my navigation app.
I was like six hours late to work!
I have been to Watertown
I have been to Watertown, NY. The coffee sucked.
Dumb trademark
I thought for sure one of these two companies was created by Uncommon Grounds in Burlington VT that closed in 2019 after 25 years as one of the oldest coffee shops in Burlington.
When I found out that wasn't true, I had to do a double take to realize the one in NY wasn't an eastern cousin to Uncommon Grounds in Iowa.
And imagine my surprise when I found out neither one is using beans produced from Uncommon Grounds Coffee Roastery in California.
So, I stopped by the UnCommon Grounds food truck in Pennsylvania to get a drink while I mulled over all this confusion because the coffee at the UnCommon Grounds cafe in Bryn Mawr isn't as good.
That refreshed my mind enough to step back and take a look at the big picture and realize that I didn't even know the half of it.
Seems like Private Equity gremlins have gotten to Dan Murphy.
He's making a push into Vermont and Mass to expand rapidly then he'll cash out, the brand will suffer and die, then the name will be locked away in a drawer forever.
Your trademark is bad and you should feel bad.
"Plan to expand into MA" but the other place was already in MA for 25 years? Give me a break.
It's not even that creative a name.
This is a shame.
The Watertown UC is a nice, family-run business. If I have it right, the property's been in the family since it was a gas station in the mid-20th-century. Good breakfast, sweet people. And now they'll have an expensive mess on their hands.
Both of these have been
Both of these have been around since the 1990s, so this has been brewing for some time, but I don't think their claim amounts to a hill of beans
And it will take months if not years
for this lawsuit to grind its way through the court system.
I think...
...that I will claim an ancestor of mine originated the phrase "common ground" and I will sue the hell out of this Albany microchain.
Also...
If you should be in the Albany area and wanting coffee, skip this place and go to Jacob Alejandro. Original location in Troy, now has one in Albany I think. The best coffee I've ever had anywhere.