Second Circuit: revisions to Federal Trademark Dilution Statute revive Starbucks claimFebruary 16, 2007

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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