Since August of 1997, the folks at the Black Bear Mico Roastery in New Hampshire have been slinging pebbles at coffee colossus Starbucks over the smaller company’s “Charbucks” blend. And in spite of court rulings in favor of the little guy, Daddy Starbucks has continued to fight. But last week, a U.S. District Court in New York may have shut the door on the Seattle java slinger’s attempts to rid the world of Charbucks.

The latest case before the court involved Starbucks’ claim that Black Bear’s use of the name Charbucks violates the Trademark Dilution Revision Act of 2005. Starbucks alleged “Dilution by blurring,” meaning an “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.”

To make its case, Starbucks present results of a phone survey of 600 people:

30.5% of respondents said that they associated the term “Charbucks” with “Starbucks,” and 9% said they associated the term “Charbucks” with coffee. When asked to name a company or store that they thought might “offer a product called `Charbucks,'” 3.1% of respondents said Starbucks… These results constitute evidence of actual association.

However, writes the court in its ruling, “the survey did not measure how consumers would react to the Charbucks marks as they are actually packaged and presented in commerce. Further, the percentage of respondents who indicated a mental association between the marks is relatively small.”

The judge also pointed to case law on trademark dilution that stated such statutes should not be utilized to “prohibit all uses of a distinctive mark that the owner prefers not be made.”

Ultimately, the court found that while Starbucks was able to prove that there is some association in the consumer’s mind between the names Starbucks and Charbucks (in fact, Black Bear admits it came up with the blend’s name as a way to mock the coffee giant after it purchased Boston chain Coffee Connection), it could not reasonably see how consumers would be confused into thinking they are from the same company:

After considering all of the evidence and noting the dissimilarity of the marks as used in commerce, the weakness of the survey evidence, and the fact that consumers encounter Defendant’s Charbucks term only in conjunction with other marks unique to Defendant, the Court holds that the Charbucks 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. In other words, Plaintiff has failed to carry its burden of proving that Defendant’s use of its marks, as evidenced on the record before the Court, is likely to cause dilution by blurring.

STARBUCKS CORPORATION v. WOLFE’S BOROUGH COFFEE, INC. [Leagle.com]

Thanks to Troy for the tip!

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