## Facts

- Starbucks Corporation and Starbucks U.S. Brands LLC owned numerous federally registered trademarks for “Starbucks” and related branding used with coffee and coffeehouse goods and services.
- Starbucks was a nationwide coffee retailer, and its Starbucks marks were famous and widely recognized by U.S. consumers.
- Wolfe’s Borough Coffee, Inc., doing business as Black Bear Micro Roastery, sold coffee using the designations “Mister Charbucks,” “Mr. Charbucks,” and “Charbucks Blend” (the Charbucks marks).
- Wolfe’s products were sold in packaging that included a black bear image and other design elements that did not copy Starbucks’ trade dress.
- Starbucks sued Wolfe in the Southern District of New York seeking to stop use of the Charbucks marks, asserting, among other theories, federal dilution.
- After earlier proceedings and a remand from the Second Circuit to apply the Trademark Dilution Revision Act of 2006 (TDRA) blurring standard, the district court again evaluated Starbucks’ dilution-by-blurring claim under 15 U.S.C. § 1125(c).
- Starbucks relied heavily on survey evidence offered to show that consumers made a connection between “Charbucks” and “Starbucks,” but the court found the survey less persuasive because it tested the term “Charbucks” in isolation rather than in the way Wolfe used the marks in the marketplace.
- The court found that, although “Charbucks” sounded like “Starbucks,” the overall appearance and presentation of Wolfe’s marks as used on its products differed substantially from Starbucks’ branding.

## Issues

1. Whether Starbucks proved that Wolfe’s use of the Charbucks marks was likely to dilute Starbucks’ famous marks by blurring under the TDRA, 15 U.S.C. § 1125(c).
2. Whether Starbucks was entitled to injunctive relief based on dilution by blurring.

## Decision

- The court entered judgment for Wolfe and denied Starbucks’ request for an injunction on its federal dilution claim.
- Applying the TDRA’s multi-factor framework, the court found the Starbucks marks highly distinctive, widely recognized, and used largely exclusively, which favored Starbucks.
- The court found the degree of similarity between the Starbucks marks and the Charbucks marks, as used in commerce (e.g., “Mister Charbucks,” “Charbucks Blend” on black-bear packaging), was minimal, which weighed against likely blurring.
- The court found Starbucks’ proof of actual consumer association was weak, giving limited weight to Starbucks’ survey because it did not mirror real-world marketplace presentation.
- The court found Wolfe intended some association with Starbucks (a reference to dark-roast coffee), but treated that factor as insufficient to establish a likelihood of dilution when the overall evidence was considered.

## Legal Principles

- Under the TDRA, a plaintiff asserting dilution by blurring must prove a likelihood that the junior mark will impair the distinctiveness of a famous mark. 15 U.S.C. § 1125(c).
- In assessing blurring, courts consider the nonexclusive statutory factors in § 1125(c)(2)(B), including: (1) similarity, (2) distinctiveness of the famous mark (whether original or developed through use), (3) substantially exclusive use by the famous-mark owner, (4) degree of recognition, (5) the junior user’s intent to create an association, and (6) actual association between the marks.
- Similarity is evaluated based on the marks’ overall commercial impression in the marketplace, not by comparing a shared syllable or fragment in isolation.
- Survey evidence may support (or undermine) a showing of association, but its weight depends on design and whether it reflects how consumers encounter the marks in real purchasing settings.
- Even where a plaintiff’s mark is famous, strong fame and recognition do not by themselves establish a likelihood of dilution if similarity and association evidence is limited.

## Conclusion

The district court held that Starbucks did not carry its burden to show that Wolfe’s “Charbucks” marks were likely to blur the distinctiveness of Starbucks’ famous marks under the TDRA. Although Starbucks showed strong fame, recognition, and distinctiveness, the court found only minimal similarity between the marks as actually used and weak evidence of consumer association, so it denied injunctive relief and entered judgment for Wolfe.


Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 2011 WL 6747431 (2011)