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

588 F.3d 97 (2nd Cir. 2009)

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Nature of the Case

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Facts

P was founded in 1971. P has over 8,700 retail locations in the United States, Canada, and 34 foreign countries and territories. P supplies its coffees to hundreds of restaurants, supermarkets, airlines, sport and entertainment venues, motion picture theaters, hotels, and cruise ship lines. P maintains an internet site that generates over 350,000 'hits' per week from visitors. P displays its registered marks on its products and areas of business. From 2000 to 2003, P spent over $ 136 million on advertising, promotion, and marketing activities. Black Bear, has its principal place of business in Tuftonboro, New Hampshire. It is a family-run business that 'manufactures and sells roasted coffee beans and related goods via mail order, internet order, and at a limited number of New England supermarkets.' In April 1997, Black Bear began selling a 'dark roasted blend' of coffee called 'Charbucks Blend' and later 'Mister Charbucks.' Charbucks Blend was sold in a packaging that showed a picture of a black bear above the large font 'BLACK BEAR MICRO ROASTERY.' The package informed consumers that the coffee was roasted and 'Air Quenched' in New Hampshire and, in fairly large font, that 'You wanted it dark You've got it dark!' Mister Charbucks was sold in a packaging that showed a picture of a man walking above the large font 'Mister Charbucks.' The package also informed consumers that the coffee was roasted in New Hampshire by 'The Black Bear Micro Roastery' and that the coffee was 'ROASTED TO THE EXTREME FOR THOSE WHO LIKE THE EXTREME.' P demanded that Black Bear cease use of the Charbucks Marks. D essentially told D to go to hell. P filed a complaint alleging trademark dilution in violation of 15 U.S.C. §§ 1125(c), 1127; trademark infringement in violation of 15 U.S.C. § 1114(1); unfair competition in violation of 15 U.S.C. § 1125(a); trademark dilution in violation of New York Gen. Bus. Law § 360-l; deceptive acts and business practices and false advertising in violation of New York Gen. Bus. Law §§ 349, 350; and unfair competition in violation of New York common law. P introduced expert testimony which concluded that 'the number one association of the name 'Charbucks' in the minds of consumers is with the brand 'Starbucks' [and that] the name 'Charbucks' creates many negative associations in the mind of the consumer when it comes to describing coffee.' The court ruled for D. It held there was neither actual dilution nor any likelihood of dilution. It found there was no likelihood that consumers would confuse the Charbucks Marks for the Starbucks Marks. P appealed and Congress passed the Trademark Dilution Revision Act of 2005 (TDRA). The TDRA amended the Federal Trademark Dilution Act to provide, that the owner of a famous, distinctive mark is entitled to an injunction against the use of a mark that is 'likely' to cause dilution of the famous mark. 15 U.S.C. § 1125(c)(1). The appeals court vacated the judgment and remanded for further proceedings. The District Court entered judgment for D. It held that P failed to demonstrate an entitlement to relief on its federal and state claims. P appealed.