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In determining whether there is a likelihood of confusion, a court applies the eight-factor Polaroid balancing test. The eight factors are: (1) strength of the trademark; (2) similarity of the marks; (3) proximity of the products and their competitiveness with one another; (4) evidence that the senior user may "bridge the gap" by developing a product for sale in the market of the alleged infringer's product; (5) evidence of actual consumer confusion; (6) evidence that the imitative mark was adopted in bad faith; (7) respective quality of the products; and (8) sophistication of consumers in the relevant market. The application of the Polaroid test is not mechanical, but rather, focuses on the ultimate question of whether, looking at the products in their totality, consumers are likely to be confused.
Black Bear, a company engaged in the sale of coffee products, is a family-run business that "manufactures and sells . . . roasted coffee beans and related goods via mail order, internet order, and at a limited number of New England supermarkets." Black Bear began selling a "dark roasted blend" of coffee called "Charbucks Blend" and later "Mister Charbucks" (together, the "Charbucks Marks"). Charbucks Blend was sold in a packaging that showed a picture of a black bear above the large font "BLACK BEAR MICRO ROASTERY." The package informed consumers that the coffee was roasted and "Air Quenched" in New Hampshire and, in fairly large font, that "You wanted it dark . . . You've got it dark!" Mister Charbucks was sold in a packaging that showed a picture of a man walking above the large font "Mister Charbucks." The package also informed consumers that the coffee was roasted in New Hampshire by "The Black Bear Micro Roastery" and that the coffee was "ROASTED TO THE EXTREME . . . FOR THOSE WHO LIKE THE EXTREME. “Not long after making its first sale of Charbucks Blend, in August 1997, Starbucks demanded that Black Bear cease use of the Charbucks Marks. Starbucks filed a complaint in the District Court, alleging trademark dilution and infringement.
Was there a likelihood of confusion between the products of plaintiff and defendant?
Plaintiff must prove a probability of confusion, not a mere possibility, affecting numerous ordinary prudent purchasers" in order to establish a likelihood of confusion with respect to the remaining five Polaroid factors, namely, (1) similarity of the marks; (2) evidence of actual consumer confusion; (3) evidence that the imitative mark was adopted in bad faith; (4) respective quality of the products; and (5) sophistication of consumers in the relevant market; we find no error in the District Court's determinations as to each individual factor -- with the exception of (5) -- and agree that, ultimately, there is no likelihood that consumers will confuse the Charbucks Marks with the Starbucks Marks. Given the prominence of "Black Bear" on the Charbucks products and the conspicuous differences between the Charbucks Marks and the Starbucks Marks as they are presented to the public, it was not clearly erroneous for the District Court to find that the two were only minimally similar.