Blurring away

Originally posted 2008-06-11 12:28:36. Republished by Blog Post Promoter

It really does appear that trademark dilution, once the darling of federal judges seeking to enforce trademark rights in gross on behalf of markholders whose brands they recognized, is getting less and less respect. Which in general doesn’t trouble us too much, though it’s not as if Starbucks hasn’t had enough undeserved aggravation on the trademark front lately, in addition to what it stupidly brings on itself. Reports Mike Atkins, linking to Ryan Gile:

The court framed the issue as follows: “…Plaintiff must demonstrate that Defendant’s use of its ‘Mr. Charbucks’ and ‘Mister Charbucks’ marks for one of its coffee blend products creates associations arising from similarity to the Starbucks marks that are likely to impair the distinctiveness of the Starbucks mark or tarnish that mark by harming its reputation.

On Starbucks’ blurring claim, the court found: “…Starbucks’ marks are distinctive and famous. Thus, several of the specified factors weigh in its favor. However, Defendant’s marks, as used in commerce, are not substantially similar to Plaintiffs’ Starbucks marks, and the association Defendant intended to evoke in consumers’ minds through its playful dissimilar mark is not one that would be likely to dilute the Starbucks marks as unique identifiers of Starbucks’ goods and services. Rather, it is dependent on an identification of those marks with Starbucks’ own products and a characteristic of the taste of those products. The record is, therefore, insufficient to demonstrate the requisite likelihood that the association arising from the similarity of the core terms is likely to impair the distinctiveness of Starbucks’ mark, and Plaintiff is not entitled to injunctive relief under that statute.”

Does that sound right to you? Let’s say I used to think solely of Starbucks when I encountered STARBUCKS coffee, but now after encountering CHARBUCKS coffee, I think of both Starbucks and Wolfe’s Borough Coffee. Isn’t that classic dilution by blurring?

(Decision here.)

This does not sound right to me; not only as an analysis of blurring vel non, but as… an analysis. It really just does not make any sense. Again:

Defendant’s marks, as used in commerce, are not substantially similar to Plaintiffs’ Starbucks marks …

CHARBUCKS for coffee not substantially similar to STARBUCKS for coffee? Really?

… and the association Defendant intended to evoke in consumers’ minds through its playful dissimilar mark is not one that would be likely to dilute the Starbucks marks as unique identifiers of Starbucks’ goods and services. Rather, it is dependent on an identification of those marks with Starbucks’ own products and a characteristic of the taste of those products.”

This appears to be a complete non-sequitur. It is an association with a famous mark intended to be evoked in consumers’ minds? But it is not likely to be dilutive?

And what is a “playful dissimilar mark”? “Playful” because the defendant’s logo has a “cute” bear in it? Another analytical flaw! In fact, those things’ll tear your guts out over a Ring Ding wrapper!

We never much liked trademark dilution, and we’re not alone, but that doesn’t mean it should die by a million small judicial cuts.  Something about Starbucks, though, seems to bring out the haters. Come on, it’s pretty good coffee, people!

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Author:Ron Coleman

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