Coffee chain sends warnings to local shop
What do you call a regular coffee with a shot of espresso?
Depending on whom you ask, this common drink can be called a "red eye," a "shot in the dark" or a "depth charge." To the average coffee drinker, those three terms are interchangeable, but as one Duluth coffee shop recently found out, the last term, "depth charge" is a federally registered trademark.
"There are common terms, or what look like common terms for coffee, such as Americano or cappuccino or lattes, all these common terms. So when we opened up our shop a year ago, we put the 'depth charge' on the menu thinking it was a common term. No idea it wasn't," said Linda Towne, owner of Grand World Coffee, 4918 Grand Ave. "We didn't know until we received the letter."
In December, Towne received a cease-and-desist letter from a Minneapolis attorney on behalf of the chain Caribou Coffee. Caribou has owned the "depth charge" trademark since 2003, though the registration indicates the term has been used by the company since 1995.
"This is certainly not an unusual situation. It's very commonplace for brands to protect their valuable trademarked product names. For this reason, we did send a letter asking that this business to please respect Caribou's long-trademarked Depth Charge product name," wrote Jenifer Hagness, a spokesperson from Caribou Coffee in response to The Budgeteer's request for comment.
The letter requested Towne cease using "depth charge" on her menu and to send a letter stating she would never use it again.
"So I talked to the staff about it and we decided to change the name to 'deep charge' thinking that was different enough," Towne said.
Apparently not. On March 6, Towne received another letter from the Minneapolis attorney stating that the change "is insufficient to alleviate the potential for consumer confusion" and that a court would likely rule that "deep charge" would still be an infringement of the trademark because the "second words are identical and the first words are synonyms for one another, are phonetically very similar and are roughly the same length."
"So basically, we're going to change it again. I felt like it was a little bit of a stretch, but I really don't want any trouble. I don't want to poke the Caribou," Towne said.
Grand World Coffee isn't the only Duluth coffee shop to find themselves in hot water with Caribou. In 2014, Beaner's Central coffee shop owner Jason Wussow received a similar letter for using the same term.
"We'd been calling a 'depth charge' since we first opened in 1999," Wussow said. "It's an old term. People have been calling it this for a many, many years. If you go to coffee houses in Minnesota, they mostly call it a depth charge. If you go out east, they might call it a red eye or a shot in the dark. There are these terms across the country where if you're someone like me who has been drinking coffee and traveling the country for several decades, you see these terms and it's just common knowledge."
Wussow also didn't want further legal trouble and instead turned the situation into a naming contest. Wussow spoke with regular customers and ran a short Facebook campaign to garner suggestions for a new name for the drink. In the end, he decided to call it "tow truck" in honor of repeat patron nicknamed "Tow Truck Eric" who often ordered the drink.
"He'd always come in with his tow truck and grab a depth charge. He'd been drinking it for 15 years. So we thought, we'll just call it 'tow truck' after him because it's perfect for when you're really broken down and you need a pick me up," Wussow said.
Towne also shared a portion of the letter on Facebook and received a flood of comments suggesting other names. Some of the suggested names poke fun at the controversy, such as "The Drink that Almost Caused Us to be Sued" or "The Coffee Formerly Known as 'Depth Charge,'" or turn to pig latin with "Epthday Argechay."
"I don't know what we'll end up calling it yet. We'll keep the contest going for a little while longer. For now, we have 'red eye' on the board, but I know we'll get something better," Towne said. "As someone else pointed out on our Facebook post, 'depth charge' and 'deep charge' are actually kind of boring, so we'll come up with something more interesting and unique that's our own."