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.  

Fourth Circuit: Chewy Vuiton not likely to be confused with or dilute Louis Vuitton trademarks

The Fourth Circuit Tuesday affirmed a district court's grant of summary judgment of no trademark infringement or dilution.  At issue were dog toys that parodied the trademarks and trade dress of Louis Vuitton.  The Fourth Circuit agreed that the successful parody resulted in no trademark infringement.  On the trademark dilution claim, the court rejected the lower court's reasoning because the district court failed to fully apply the relevant dilution factors, but reached the same conclusion that there was no likely dilution.

More detail of Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC after the jump.


Ninth Circuit: PerfumeBay confusingly similar to eBay, but Perfume Bay is not

In a decision yesterday, the Ninth Circuit affirmed a district court's finding that the mark "Perfumebay" was likely to be confused with eBay, and affirmed an injunction barring the use of the domains and (as of today, both these domains are still functional).  The court also affirmed the finding that the use of "Perfume Bay" was not likely to cause confusion, in part because "PerfumeBay" incorporates the full "eBay" trademark, whereas "Perfume Bay," with the addition of the space between the words, no longer incorporates the whole eBay trademark.

The Ninth Circuit reversed the district court's finding of no likely dilution under California law, stating that "it does not appear that the district court fully considered the highly distinctive qualities of eBay's famous mark."  Perfumebay's use of the suffix "Bay" may cause consumers to "no longer associate the usage of the 'Bay' suffix with eBay's unique services," causing the "uniqueness" of eBay's mark to be "diluted in direct proportion to the extent consumers, particularly internet users, disassociate the eBay mark with eBay's services."

More detail of, Inc. v. eBay Inc. after the jump.


Ninth Circuit: Reversible error to only consider one of the likelihood of confusion factors

In a trademark case yesterday, the Ninth Circuit held that the similarity-of-the-marks factor could not be considered exclusive of the other likelihood of confusion factors in determining trademark infringement.  In doing so, the court reversed the grant of summary judgment against the defendant's counterclaims of trademark infringement, as well as the defendant's counterclaims for copyright infringement and dilution.

More detail of Jada Toys, Inc. v. Mattel, Inc. after the jump.


Second Circuit: revisions to Federal Trademark Dilution Statute revive Starbucks claim

The Second Circuit recently ruled that coffee giant Starbucks could proceed with its trademark dilution case against a defendant using the mark "Mr. Charbucks." In 2005, the lower court found after a bench trial that Starbucks had not proven actual dilution of its trademark, the requirement under the earlier version of the statute. The statute was amended on October 6, 2006, while the case was on appeal, and now only requires proof of likelihood of dilution as opposed to actual dilution.

While amendments to statutes are not ordinarily given retrospective effect, here Starbucks was seeking an injunction against further use of the Mr. Charbucks mark. As a result, the court held that the revised statute applies to that aspect of the case because it amounted to prospective relief. As a result, the Second Circuit vacated the earlier ruling and remanded the case for analysis under the new standard.

The defendant's statement regarding the case is here. The defendant also has a directory of many of the pleadings and discovery requests and responses here.

To read the full decision in Starbucks Corp. v. Wolfe's Borough Coffee, Inc., click here.

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