MVS Filewrapper® Blog: Flawed Evidence Undercuts "Charbucks" Trademark Suit

In Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., the U.S. Court of Appeals for the Second Circuit affirmed a district court’s decision denying injunctive relief in Starbucks’ trademark case against Black Bear Micro Roastery over Black Bear’s use of “Charbucks” for coffee. 


Starbucks sued Black Bear in 2001, alleging, among other things, trademark dilution in violation of 15 U.S.C. §§ 1125(c), 1127.  In December 2005 the district court ruled in favor of Black Bear and dismissed Starbucks’ complaint.  Starbucks appealed this original decision, but while the appeal was pending, Congress passed the Trademark Dilution Revision Act of 2006 (“TDRA”), which amended portions of the federal trademark law relevant to the case, resulting in the case being remanded.   The district court again ruled in favor of Black Bear, and Starbucks again appealed.  On appeal, the Second Circuit remanded again, instructing the district court to reconsider Starbucks dilution claim based on its interpretation of the TDRA provisions.  Once again, the district court found in favor of Black Bear, and once again Starbucks appealed.

On appeal, the Second Circuit made its own conclusions regarding the elements of Starbucks’ dilution case, under the TDRA.  The appellate court refused to revisit its previous conclusion that the “Charbucks” mark is only minimally similar to Starbucks famous mark.  The court also rejected Starbuck’s arguments that Black Bear’s admitted intent to create an association raises a strong presumption of actual association, and that Starbuck’s proffered survey evidence proved a high degree of association.  The court then conducted its own weighing of the factors, and concluded that—although four of the six factors favored Starbucks—the overall determination based on the weight afforded each factor favored a finding that there was not a likelihood of dilution. The court concluded that what ultimately tipped the balance was that Starbucks meet its burden due to the combination of fundamentally flawed survey evidence and minimal similarity of the marks.

The full court opinion is available here.  

Second Circuit: Statements made in settlement discussions admissible to prove estoppel

In a decision yesterday, the Second Circuit affirmed a jury's findings in a trademark infringement case between Polo Ralph Lauren and the U.S. Polo Association.  The jury found that one of the USPA's four marks was likely to cause confusion.  The two parties had been involved in a previous lawsuit in the early 1980s, and the USPA's former logo was found to have infringed Polo's trademark rights.

The court held that it was not erroneous for the district court to permit evidence of statements made during settlement negotiations that one of the logos was not "offensive" to Polo, as it was necessary for the USPA's claim of estoppel.  Further, the court held that it was not erroneous for the district court to refuse to give a jury instruction that the USPA, because it was previously found to have infringed, was required to stay a "safe distance" away from Polo's mark.  Such an instruction would have confused the jury regarding the applicable legal standard.

More detail of PRL USA Holdings, Inc. v. U.S. Polo Ass'n, Inc. after the jump.


Ninth Circuit: have another look at those two moose - denial of preliminary injunction vacated

In a decision Tuesday, the Ninth Circuit vacated a district court's denial of a preliminary injunction to Abercrombie & Fitch over an alleged infringement of its "Moose" marks by Moose Creek, a competing clothing company. 

The Ninth Circuit found that the district court had misapplied several of the factors used in the Ninth Circuit to determine likelihood of confusion, called the Sleekcraft factors, after the case in which they were first listed.  Because of this misapplication, the denial of injunction was vacated, but, because the court could not say that Abercrombie & Fitch would necessarily meet the standard for a preliminary injunction, the issue was remanded for redetermination by the lower court.

More details of Abercrombie & Fitch Co. v. Moose Creek, Inc. after the jump.


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