Seattle Trademark Lawyer

The Second Circuit has vacated the Southern District of New York’s dismissal of Starbucks Corp.’s dilution claim against Wolfe’s Borough Coffee, Inc. In this case, Starbucks alleges that Wolfe’s sale of coffee under the names “Mister Charbucks” or “Mr. Charbucks” dilutes the STARBUCKS trademark for coffee. 

This appears to be the first appellate decision based on the Trademark Dilution Revision Act.

The Second Circuit found: “Subsequent to the district court’s order, Congress amended the [Federal Trademark Dilution Act] in response to the Supreme Court’s decision in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 433 (2003), which had construed the FTDA to require a showing of actual dilution, as opposed to likelihood of dilution. The FTDA, as amended effective October 6, 2006, entitles the owner of a famous, distinctive mark to an injunction against the user of a mark that is ‘likely to cause dilution’ of the famous mark.” 15 U.S.C. § 1125(c)(1). The amended statute applies to this case to the extent that Starbucks has sought injunctive relief on the issue of dilution.”

“Here, the district court applied the pre-October 6, 2006 version of the FTDA, as construed by Moseley, and determined that Starbucks had failed to prove actual dilution. Although the district court also considered whether Starbucks had shown a likelihood of dilution under New York Gen. Bus. Law. § 360-1, it is not clear that that statute is coextensive with the amended statute. In addition, the district court’s treatment of the New York statute does not permit a review of whether the analysis is vacated and conforms with the amended statute.”

Based on these findings, the Second Circuit vacated the district court’s judgment and remanded for further proceedings consistent with its opinion and the Trademark Dilution Revision Act.