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

736 F.3d 198 (2013)

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

United States Court of Appeals for the Second Circuit
736 F.3d 198 (2013)

  • Written by Philip Glass, JD

Facts

Black Bear Micro Roastery (Black Bear) (defendant) created the Charbucks coffee blend in 1997. Black Bear first called the coffee “Charbucks Blend” and later renamed it to “Mister Charbucks” or “Mr. Charbucks.” Starbucks Corp. (plaintiff) initiated a lawsuit against Black Bear for trademark dilution in 2001. Before the March 2005 trial, Starbucks conducted a phone survey in which 79 percent of participants recognized the Starbucks brand. Just 3.1 percent of the survey participants believed that Starbucks would sell a product called Charbucks. The district court denied injunctive relief in December 2005, and Starbucks appealed. The circuit court remanded the matter to the district to analyze in light of the distinctiveness, recognizability, exclusivity-of-use, similarity, intent-to-create-an-association, and actual-association factors laid out in the Trademark Dilution Revision Act of 2006 (TDRA). The district court again denied injunctive relief, finding that Starbucks failed to show similarity and actual association. Starbucks appealed, and the circuit court remanded. The district court ruled against Starbucks on similarity and actual-association grounds. Starbucks again appealed.

Rule of Law

Issue

Holding and Reasoning (Lohier, J.)

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Casebooks

Trademark