Monday, November 18, 2013

Starbucks battles Black Bear over Trademark Law (Likelihood of Dilution)... and loses

This court clash was a classic David v. Goliath; this time a trademark law case in the 2nd Circuit Court of Appeals between Starbucks and Charbucks. In finding that there was no likelihood of dilution, the court noted the factors for dilution by blurring:

  • (i) The degree of similarity between the mark or trade name and the famous mark.
  • (ii) The degree of inherent or acquired distinctiveness of the famous mark.
  • (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
  • (iv) The degree of recognition of the famous mark.
  • (v) Whether the user of the mark or trade name intended to create an association with the famous mark.
  • (vi) Any actual association between the mark or trade name and the famous mark.
The court found that there was no likelihood of dilution by blurring. The full case name is Starbucks Corporation v. Wolfe's Borough Coffee, Inc., 12-364-cv (2nd Cir. 11-15-2013), check it out if scholarly reading is your bag, otherwise check out this link to a Reuter's recap.

As with all cases, it's complicated, and some case history is helpful (like knowing the 2nd Circuit previously found no likelihood of confusion, and thought the survey evidence was insufficient, and that there was no bad faith in adopting the "Charbucks" mark). 

That said, doesn't this sound like a bad decision? (pun intended).

Think it's wrong? Think it's right? Tell me! @ajswjTM and @IPLawTalkinGuys on twitter, Hamilton IP Law, PC on facebook.

I guess the ultimate lesson is, don't mess with bears, no matter how little.
http://www.trademarkandcopyrightlawblog.com/uploads/image/starvchar(1).png