...But "Charbucks" Brand Coffees Not Likely to Confuse

by Thomas Long, Legal Editor, CCH Trademark Law Guide

A seller of packaged coffees did not violate the trademark rights of coffee seller Starbucks Corp. by marketing a blend of roasted coffee under the names "Charbucks Blend," "Mister Charbucks," and "Mr. Charbucks," the federal district court in New York City has decided. Confusion was not likely, and the Charbucks marks did not dilute Starbucks' trademarks through blurring or tarnishment.  

Likelihood of Confusion  

The strength of Starbucks' marks and the relatedness of the parties' goods favored Starbucks, the court said, but the other Polaroid likelihood of confusion factors did not. The word "Charbucks" was similar to "Starbucks," but the Charbucks coffee's packaging was different in imagery, color, and format from Starbucks' logo and signage. The defending seller's logo included its house brand name, Black Bear. Also, the defending seller did not use the word "Charbucks" as a stand-alone word in promoting or offering its product.  

There was "miniscule" evidence of actual confusion, according to the court. As for the issue of intent, there was evidence that the Charbucks seller intended to take advantage of the similarity of the word to the name Starbucks, as well as of associations of the word Charbucks with particular perceptions of Starbucks' products as a very dark roast of coffee. This did not, however, support a reasonable inference that the name was adopted with the intention of misleading consumers as to a connection between Charbucks coffee products and Starbucks, in the court's opinion.  

Dilution  

There was no indication that use of the term "Charbucks" affected the ability of the Starbucks marks to serve as unique identifiers of Starbucks' products. Starbucks' blurring claim, therefore, failed. In addition, Starbucks failed to establish that consumers' negative perceptions, if any, of the word "Charbucks" in association with coffee would have a negative impact on Starbucks' brand name recognition.  

Starbucks Corp. v. Wolfe's Borough Coffee, Inc., SD N.Y., ¶60,726

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