The founder and principal of the Miami public relations firm JLPR, publicist JennyLee Molina,
Molina first heard of the company using her 3:05 Cafecito trademark over the summer when friends and bloggers began congratulating her on the “partnership” with Bustelo. To her surprise, the company had been creating a series of pop-up activations in cities such as New York, Los Angeles, and Chicago where free coffee was distributed at 3:05 p.m., with signs depicting “305” and “cafecito time” held by attendees.
Molina says Bustelo is diluting her brand and making it unprofitable for her.
Miami’s official coffee time is 3:05 p.m., recognized by Miami Mayor Tomás Regalado in a campaign Molina spearheaded.
This past October 25, Molina asked the J.M. Smucker Company to properly recognize JLPR; she asked for nothing more than creative credit. She said the company claimed that afternoon coffee has been a longtime cultural tradition and cannot be credited to the brand 3:05 Cafecito and its creator Molina.
“As soon as they started doing these events specifically in New York, I got text messages from different people thinking we had partnered with them. Right off the bat, there was confusion about this being a partnership with the brand, which they claim that their use of 3:05 won’t cause any confusion in the marketplace,” Molina says. “I sent them an email saying it was cool they were doing the events, and I’m really flattered, but this is our brand, this is a campaign we started, and we monetize 3:05 Cafecito by using it as a marketing vehicle for events; we use it as a social media influencer with other brands that we promote on the 3:05 Cafecito channel."
Molina says she worked hard to designate 3:05 as Miami's official coffee break time. "That's something we started. 3:05 Cafecito itself is trademarked, and it's our intellectual property and a brand." The publicist says she believes this is a classic David-and-Goliath scenario. "They're counting on that we're a small brand and that we're going to fold and we're not going to say anything."
The matter quickly escalated, and the J.M. Smucker Company's senior corporate counsel in trademarks replied to Molina’s request:
Dear JennyLee,Molina says she would've liked to have collaborated with the company had it given her credit in the first place, but that ship has sailed. Until then, she's asking Miamians to boycott their favorite coffee in support of her campaign.
I was asked to respond to your email of November 7, specifically to your concerns that Café Bustelo’s use of “3:05” and “Cafecito Time” is creating confusion with respect to “3:05 Cafecito.”
Initially, please note that our uses of “3:05” and “Cafecito Time” at our events are not trademark uses—these terms are being used merely descriptively to communicate information to consumers about the time of day that free cafecito will be offered.
Our research shows that 3:05 p.m. has been recognized as “Miami’s official cafecito time” following the mayor’s proclamation in 2013. We do not believe that anyone has exclusive rights in celebrating a coffee moment at 3:05 p.m. To claim otherwise seems contrary to the idea of sharing pride in the afternoon cafecito ritual as a way to honor the Latin culture in Miami.
Additionally, many third parties are also using “3:05” or “305” either descriptively or as part of other trademarks. This means there is already a crowded field of 305 marks coexisting with each other in the marketplace and on the federal register, and consumers are able to distinguish between them without confusion. Thus, our non-trademark use of “3:05” is not likely to cause confusion among consumers.
Finally, “cafecito” and “cafecito time” are generic terms that are not subject to trademark protection, and 305 is geographically descriptive as a reference to the telephone area code of Miami, Florida, and also not protectable. In fact, the USPTO has required a disclaimer of exclusive rights to the terms “cafecito” and “305” in numerous third party registrations.
In conclusion, we are unaware of any instances of confusion resulting from our use of “3:05” or “Cafecito Time,” nor do we believe that any confusion is likely to occur. If you have additional information that you would like to provide, please let me know.
According to Molina, the last correspondence she exchanged with the company was the one above. The J.M. Smucker Company did not immediately respond to New Times' request for comment.
"If they would have done a post saying to join the #busteloexperience and drink coffee at 3:05 p.m., brought to you by 3:05 Cafecito, I would have been more than fine," Molina says. "At the very least, they could have corrected what happened, but what they did was take a stance that my idea is not my idea, and that’s why I’m upset. It’s not fair. They gain nothing and lose nothing by giving us credit.
"I grew up loving Bustelo, and it’s unfortunate they have made their position clear of not supporting a small entrepreneur by stealing my idea and not properly crediting me.”
