Black Bear freely admits to having made up the Charbucks name for one of its blends as a way of mocking Starbucks — whose beans some coffee aficionados insist are over-roasted — after that company snatched up a local Boston coffee chain.
In 2011, a U.S. District Court judge ruled that the Charbucks blend names and marks are “only weakly associated with the minimally similar Starbucks marks and, thus, are not likely to impair the distinctiveness of the famous Starbucks marks,” and stated that Starbucks had failed to prove that the possible confusion was likely to cause “dilution by blurring” of the Starbucks trademark.
And so Starbucks appealed that decision to the 2nd U.S. Circuit Court, but Reuters reports that the appeals panel let the District Court ruling stand this week.
To make its case against Black Bear, Starbucks had commissioned a telephone survey of 600 people, which — not surprisingly — found that the number one association with the name “Charbucks” is the name “Starbucks.”
The District Court judge had criticized the survey for playing word-association games rather than testing how consumers would react to the Charbucks brand in a commercial setting. And while the Charbucks/Starbucks association was the most frequently cited, only 30.5% of respondents made the connection, a number the District Court judge deemed “relatively small.”
The appeals panel agreed, calling the survey “fundamentally flawed” for not testing the real-world branding of Charbucks, which does not physically resemble any existing Starbucks branding.
“Viewed in light of Starbucks’ fame… the fact that more survey participants did not think of ‘Starbucks’ upon hearing ‘Charbucks’ reinforces the district court’s finding that the marks are only minimally similar,” wrote the panel.
Now we wait to see just how high up the legal ladder Starbucks wants to take this case.