Starbucks Corp. v. Wolfe's Borough Coffee, Inc.
736 F.3d 198
| 2d Cir. | 2013Background
- Starbucks is the owner/licensor of famous, highly distinctive "Starbucks" trademarks used worldwide; it sued Black Bear (doing business as Black Bear Micro Roastery) over Black Bear’s use of the "Charbucks" marks (e.g., "Charbucks Blend," "Mister Charbucks").
- Black Bear began using "Charbucks" in 1997, aware of Starbucks and intending to evoke dark-roast associations; Starbucks sent cease-and-desist letters and sued in 2001 asserting federal dilution and related claims.
- At bench trial Starbucks presented a nationwide telephone survey (Mitofsky) in which 30.5% named "Starbucks" as the first association to the isolated word "Charbucks," but only 3.1% said Starbucks would make a product called "Charbucks."
- The district court twice found minimal similarity (emphasizing context: packaging and full phrases) and discounted the survey because it presented only the isolated word rather than the marks as used in commerce; it ruled Starbucks failed to prove likelihood of dilution under the TDRA and denied injunctive relief.
- The Second Circuit reviewed de novo the balancing of TDRA factors but for clear error as to factual findings; it affirmed, holding no clear error in the minimal-similarity and weak-association findings and that, on balance, Starbucks failed to prove likelihood of dilution by blurring.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Degree of similarity between marks | Starbucks: Charbucks is similar enough to dilute Starbucks’ famous mark | Black Bear: Context ("Mister/Blend", packaging, website) distinguishes Charbucks, making similarity minimal | Court: Minimal similarity; prior panel ruling is law of the case and not clearly erroneous |
| Probative value of Mitofsky survey (actual association) | Starbucks: Survey shows substantial consumer association between Charbucks and Starbucks | Black Bear: Survey is flawed because it presented the isolated word, not the marks in marketplace context; association is weak | Court: District court correctly discounted the survey; actual association favored Starbucks only minimally |
| Effect of defendant’s intent to associate | Starbucks: Black Bear’s intent creates a presumption or strong evidence of association | Black Bear: Intent is a separate TDRA factor and does not automatically prove actual association | Court: Intent favors Starbucks moderately but does not establish actual association per se |
| Ultimate likelihood-of-dilution balancing under TDRA | Starbucks: Fame, distinctiveness, exclusivity + survey/intent show likelihood of dilution | Black Bear: Minimal similarity and weak actual association weigh against dilution despite Starbucks’ fame | Court: On de novo balancing, Starbucks failed to prove likelihood of dilution; judgment affirmed |
Key Cases Cited
- Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010) (explaining federal dilution by blurring and review standards)
- Moseley v. V. Secret Catalogue, Inc., 537 U.S. 418 (U.S. 2003) (held FTDA required proof of actual dilution prior to TDRA amendment)
- Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208 (2d Cir. 1999) (discussing flexible factor-based dilution analysis and role of context)
- Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2008) (survey evidence showing source association)
- Playtex Prods., Inc. v. Georgia-Pacific Corp., 390 F.3d 158 (2d Cir. 2004) (discounting survey where defendant’s mark not presented as used in commerce)
- Federal Exp. Corp. v. Federal Espresso, Inc., 201 F.3d 168 (2d Cir. 2000) (intent to evoke senior mark may support finding of association)