Anti-diluted Coffee

Starbucks v.Charbucks

Stating that the anti-dilution law should be used as “a scalpel, not a battle axe,” Judge Laura Taylor Swain of the Southern District of New York once again found that Starbucks failed to prove that the famous STARBUCKS trademark was likely to be diluted by the use of the marks CHARBUCKS BLEND, MR. CHARBUCKS, and MISTER CHARBUCKS on dark roasted coffee. In her opinion, she ordered that judgment be entered in favour of the defendant, Wolfe’s Borough Coffee, Inc., and that the long-running case be closed.

This is the third ruling that Judge Swain has made against Starbucks. It may not be the final word, however, as Starbucks may appeal yet again.

The dispute began in 1997, when Wolfe’s Borough Coffee, which does business as Black Bear Micro Roastery, started selling coffee under the names CHARBUCKS BLEND, MR. CHARBUCKS, and MISTER CHARBUCKS from a retail outlet called “The Den” in New Hampshire. Starbucks sent Wolfe’s a demand letter, but Wolfe’s refused to accede because “basically this was a large corporation coming at me and telling us what to do.” Starbucks then brought suit in the Southern District of New York.

After a two-day trial in 2005, Judge Swain ruled against Starbucks on all of its claims. In her opinion, Judge Swain held that the two marks must be “very or substantially similar” in order for dilution to occur, and that the use of MR. before CHARBUCKS alone defeats Starbuck’s dilution claim.