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
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.
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