FOR STARBUCKS THE NAME CHARBUCKS MUST TASTE BITTER

    Somehow The Trademark Troll missed the latest round in the Starbucks Mr. Charbucks saga. But a student note in The Tech Law blog sent me scurrying to Google. For several years Starbucks has been making life miserable for Wolfe’s Borough Coffee Company, a small New England coffee retailer.
    As one of their several coffee brands Wolfe’s sells a Mr. Charbucks dark blend. This caught the eye and incurred the wrath of Starbucks, who sued Wolfe’s. In an earlier decision, a Second Circuit district judge ruled against Starbucks. They appealed to the Second Circuit who sent the case back to the district judge on remand.
    On remand the district judge did what so many before him have done- he found no dilution because no confusion! After acknowledging that Wolfe’ chose the Mr. Charbucks name to play on Starbucks fame, the judge examined the Starbucks survey. He found that yes indeed, consumers made an association between Charbucks and Starbucks, but this association did not confuse consumers. Rather, the playful reference by Wolfe’s only served to accentuate the difference between Starbucks and Charbucks.
    As I have said so many times before, Frank Schechter must be spinning in his grave. It was Schechter who first warned of the harm that could befall a famous brand owner by the “whittling away” of the goodwill associated with that famous brand. Not through confusion but rather by the repeated use of the famous brand by others- even in an unrelated industry.
    Almost since the day the idea came off Schechter’s pen, the concept of trademark dilution has been the topic of controversy. Judicial resistance has been legendary, even as the rights of brand owners have otherwise been broadened by judges and legislators.
    And so, in 2009(actually 2008) the more things change the more they remain the same. For whatever reason, yet another judge has refused to bow to the idea that even though there is no confusion, I am a famous brand owner so I should win.
    Is this good news or bad news?