## Facts

- Starbucks owned numerous registered “Starbucks” trademarks for coffee and related goods and spent heavily on advertising; its marks were widely recognized.
- Wolfe’s Borough Coffee, Inc., doing business as Black Bear Micro Roastery, sold coffee using “Charbucks” designations, including “Mister Charbucks,” “Mr. Charbucks,” and “Charbucks Blend.”
- Black Bear adopted “Charbucks” with awareness of Starbucks and in part to evoke Starbucks’ reputation for dark-roasted coffee.
- Black Bear’s packaging and presentation typically featured “Black Bear Micro Roastery” and other source-identifying terms, with “Charbucks” appearing in that context.
- Starbucks sued under federal dilution law, alleging the “Charbucks” marks were likely to dilute the famous “Starbucks” marks by blurring and seeking injunctive relief.
- After multiple appeals and remands following enactment of the TDRA, the district court again found no likelihood of dilution; Starbucks appealed.

## Issues

1. Whether Black Bear’s use of the “Charbucks” marks was likely to cause dilution by blurring of Starbucks’ famous marks under 15 U.S.C. § 1125(c) (TDRA).
2. Whether the district court clearly erred in its factual findings on the TDRA’s blurring factors, including similarity and actual association.
3. Whether, on de novo review of the ultimate legal question, the evidence established a likelihood of dilution warranting an injunction.

## Decision

- The Second Circuit affirmed judgment for Black Bear and denied injunctive relief.
- The court held the district court did not clearly err in its factual findings concerning the statutory blurring factors.
- Balancing the factors de novo, the court concluded Starbucks failed to prove a likelihood of dilution by blurring.
- The court found the similarity between “Starbucks” and the “Charbucks” marks, as encountered in the marketplace, was minimal and weighed strongly against dilution.
- The court treated Starbucks’ survey evidence as weak on actual association because it tested “Charbucks” in isolation rather than as used in commerce.

## Legal Principles

- Dilution by blurring under the TDRA requires a showing that similarity between the junior and famous marks is likely to cause an association that impairs the famous mark’s distinctiveness.
- The TDRA’s six blurring factors are nonexclusive and must be weighed qualitatively; no single factor is dispositive.
- Similarity must be assessed based on how the marks are presented and encountered in the marketplace, not in isolation.
- A junior user’s intent to create an association with a famous mark does not, by itself, establish a likelihood of dilution or bad faith.
- Survey evidence is less probative when it fails to replicate marketplace context in which consumers encounter the challenged mark.
- Appellate review: factual findings on the factors are reviewed for clear error; the ultimate likelihood-of-dilution determination is reviewed de novo.

## Conclusion

The court held that, despite Starbucks’ strong showing of fame, distinctiveness, and recognition, the minimal marketplace similarity and weak evidence of actual association meant the “Charbucks” marks were not likely to blur and impair the distinctiveness of the “Starbucks” marks under the TDRA.


Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 736 F.3d 198 (2d Cir. 2013)