Trademark Law and Practice, Pages 248–253

Starbucks Corp. v. Wolfe's Borough Coffee, Inc.

United States Court of Appeals for the Second Circuit, 2013

Facts:

Plaintiff Starbucks sued defendant Black Bear to enjoin it from using its "Mister Charbucks," "Mr. Charbucks," and "Charbucks Blend" marks. A survey should that 30% of participants had Starbucks come to mind first when hearing "Charbucks".

Procedural History:

  • District court held that plaintiff failed to prove that the Charbucks marks are likely to dilute its famous Starbucks marks. It required substantial similarity and bad faith to be present and relied on evidence supporting an absence of actual confusion.

  • On a previous appeal, the court of appeals held that the degree of similarity and the intent of the defendant are only two of six factors, and that the district court should not have required these two specifically. In addition, that the absence of actual association does not weigh against either side.

Issues:

  • Is there only a minimal degree of similarity between the marks?

  • Did plaintiff only demonstrate a weak association between the marks in spite of defendant's intent and the survey results?

Reasoning:

  • As held previously, the marks are quite different when placed in the context of their packaging and "Charbucks" is incorporated into the phrases in which it is used.

  • Intent to create an association is a separate factor under the test and is not per se evidence that the actual association factor weighs in favor of the owner of the famous mark. If it were, it would essentially merging the two factors, which should be avoided in interpreting it.

  • It was also reasonable to discount the survey as it only measured concerning the isolated word "Charbucks," not the full marks and packaging that defendant is actually using and how customers would encounter it. Even so, the percent of users identifying an association was "relatively small." When actually asked what company they though might make "Charbucks," only 3.1% answered "Starbucks."

  • Next, the factors must be balanced de novo. It has already been affirmed that there is minimal similarity between the marks. Starbucks is highly distinctive, in substantially exclusive use, and widely recognized. Defendant did name Charbucks after a derogatory term used for Starbucks in Boston, but the actual association demonstrated has been weak at best. With the first and last factors being the most important, plaintiff has not demonstrated a likelihood of dilution by blurring.

Holding:

  • Yes, there only a minimal degree of similarity between the marks.

  • Yes, plaintiff only demonstrated a weak association between the marks.

Judgment:

Affirmed.

Brave Browser – Ad-free browsing