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

2011 WL 6747431 (2011)

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

United States District Court for the Southern District of New York
2011 WL 6747431 (2011)

RW

Facts

Starbucks Corporation (plaintiff), a famous nationwide coffee retailer, sued to enjoin Wolfe’s Borough Coffee, Inc. (Wolfe) (defendant) from infringing Starbucks’ green-siren trademark. Wolfe was familiar to some New England customers as the purveyor of Mister Charbucks, Mr. Charbucks, and Charbucks Blend coffees, which Wolfe sold in packages marked with the image of a black bear. The district court dismissed the suit, and Starbucks appealed. The Second Circuit remanded for the district court to consider whether Wolfe had committed dilution by blurring, a practice defined and prohibited by the Trademark Dilution Revision Act of 2006 (TDRA). On remand, the district court found that survey evidence of consumer confusion between the Wolfe marks and Starbucks was weak and that despite the similarity in sound of “Charbucks” and “Starbucks,” visually the Wolfe and Starbucks marks were substantially dissimilar. The district court once again dismissed the case. On appeal, the Second Circuit ruled that substantial similarity was only one of six nonexhaustive factors that the TDRA defined as relevant to the evaluation of a dilution-by-blurring claim. The appellate court remanded for the district court to consider all relevant factors.

Rule of Law

Issue

Holding and Reasoning (Swain, J.)

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