The third time was not the charm for Starbucks in their attempt to prevent a regional micro roastery from poking fun at Starbuck’s notorious reputation for over roasting coffee. Starting over 14 years ago, Starbucks sued New Hampshire-based Black Bear Micro Roastery over use of the term “Charbucks” as part of their product lines. Two trials and two appeals later, the Southern District of New York found, for the third time, that Black Bear was allowed to use Charbucks as a trademark for their goods.
Originally adopted as a spoof, Black Bear used the trademark “Charbucks” for a new line of dark roast coffee at a time of anti-Starbucks sentiment centered on the coffee goliath’s buying of a popular Boston coffee company. In 1997, Starbucks sent a cease and desist letter and eventually sued Black Bear for trademark dilution because of their use of Charbucks. The first trial held the plaintiffs did not prove their case for dilution. However, on appeal, the case was remanded to the district court to be evaluated under the newly passed Trademark Dilution Revision Act of 2006 (TDRA) that set new standards for dilution.
In the second trial, the court held again there was no trademark dilution. And again, the case was remanded to be considered under a new standard for similarity between marks necessary to show dilution. Finally, in this the third, and perhaps final, trial the court found there was not a sufficient amount of similarity between Charbucks and Starbucks to show dilution. A key factor in the court’s continuing position of no dilution was Black Bear’s using “Charbucks” as part of the mark “Mister Charbucks” or “Charbucks Blend”. Even though the disputed marks are only separated by two letters, that difference was enough for the courts. While there is a chance for Starbucks to appeal, this decade and a half saga may finally be at an end.
