Second Circuit Provides a Glimmer of Hope for Dilution Plaintiffs

Second Circuit Provides a Glimmer of Hope for Dilution Plaintiffs

Since the inception of the U.S. federal trademark dilution statutes, courts' interpretations have been fraught with difficulties for dilution plaintiffs. In Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97 (2d Cir. N.Y. 2009), the Court interpreted the Trademark Dilution Revision Act to be slightly less restrictive than its predecessor, the Federal Trademark Dilution Act. In this Analysis, Janet Marvel discusses the implications of this ruling. She writes:

     The Court's ruling is the latest in a case that has bounced between the district and appellate courts for nearly a decade. Starbucks Corporation and Starbucks U.S. Brands LLC sued Wolfe's Borough Coffee, Inc. d/b/a Black Bear Micro Roastery for selling MR. CHARBUCKS and CHARBUCKS BLEND coffee (collectively "CHARBUCKS"). Starbucks claimed that CHARBUCKS infringed and diluted its STARBUCKS mark, also for coffee. Starbucks alleged dilution by both blurring and tarnishment.

     The district court had found in Black Bear's favor on the dilution claims, holding that "'[the] dissimilarity alone is sufficient to defeat [Starbucks'] blurring claim, and in any event, this factor at a minimum weighs strongly against [Starbucks] in the dilution analysis.'"

     The Second Circuit stated that the district court may have placed too much significance on the similarity of the marks - one of the TDRA factors in the analysis of dilution by blurring. The Court abrogated its holding in Playtex Prods., Inc. v. Georgia-Pacific Corp., 390 F.3d 158, 167, 2004 U.S. App. LEXIS 24345 (2d Cir. 2004) that "[a] plaintiff cannot prevail on a state or federal dilution claim unless the marks at issue are 'very' or 'substantially similar.'" (citations omitted). The FTDA had contained no definition of dilution by blurring, thereby causing the Court to use the same test as the New York dilution statute. That test incorporated the "substantially similar" requirement.

(citations omitted)

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