Michael Atkins, the estimable Seattle Trademark Lawyer (true, there are others!), writes on the subject both Matthew and I have written about at length here: The outcome of the CHARBUCKS trademark case. He says this:
Because trademark dilution doesn’t require an owner to show likelihood of confusion — and, therefore, provides super-trademark rights — the federal statute limits such protection to the owners of truly “famous” trademarks, which the statute defines as trademarks that are widely known on a nationwide basis. In other words, the dilution cause of action is only available to the owners of household names.
STARBUCKS is clearly one such name. Therefore, Starbucks Corp. was able to avail itself of the dilution cause of action against coffee roaster Wolfe’s Borough Coffee, Inc., d/b/a Black Bear Micro Roastery, which had named some of its coffee CHARBUCKS BLEND and MISTER CHARBUCKS. Starbucks argued the roaster’s doing so was intended to and did call to mind Starbucks’ famous STARBUCKS brand, so Starbucks was entitled to an injunction stopping such use. . . .
[I]n the end, the Second Circuit found that despite having super-trademark rights, Starbucks did not prove the roaster’s marks were likely to dilute the famous STARBUCKS brand.
In making that decision, the Second Circuit weighed the factors set forth in the statute. It found the district court was not wrong when it concluded the parties’ marks were not very similar. It also found the district court was not wrong to conclude that Starbucks’ consumer survey was flawed because it did not reflect how the parties’ marks were used in the marketplace. Therefore, it found the survey “only minimally” proved that consumers actually associated the roasters’ marks with STARBUCKS.
The court found three of the statutory factors — distinctiveness, recognition, and exclusivity — favored Starbucks, but “the more important factors in the context of this case are the similarity of the marks and actual association.”
This led the Second Circuit to conclude: “Ultimately what tips the balance in this case is that Starbucks bore the burden of showing that it was entitled to injunctive relief on this record. Because Starbucks’ principal evidence of association, the Mitofsky survey, was fundamentally flawed, and because there was minimal similarity between the marks at issue, we agree with the District Court that Starbucks failed to show that Black Bear’s use of its Charbucks Marks in commerce is likely to dilute theStarbucks Marks.”
This goes to show that while potentially powerful — really powerful — the federal dilution statute does have its limits.
Right. The only problem is that, let’s face it, no one has any idea what they are.
Because if you would have asked me what would be a good test case for the dilution cause of action based on blurring, I would have bet on this one. And I say this as not-the-biggest-fan of dilution. But it is the law.
But what is the law?
STARBUCKS and CHARBUCKS. For coffee. Not one of them, but both of them. Second Circuit: ”Minimal similarity between the marks at issue.”
Maybe this is why some trademark lawyers get paid so well: We seem to have no idea what we’re talking about. The outcomes of so many of our cases are, it seems, completely unpredictable — big brand or small. As for the business owners and the managers and the shareholders who want, who you’d think are entitled to, some degree of predictability in the law, so they could govern their decision-making on both enforcement and business issues?
Not happening. Because this legal remedy “has its limits.” Well, our client asks — what are these limits? Read More…