| NEW YORK
NEW YORK Nov 15 Starbucks Corp has
failed to persuade a federal appeals court to stop a small,
family-owned New Hampshire roaster from selling coffee known as
Ruling in a case that began in 2001, the 2nd U.S. Circuit
Court of Appeals said Black Bear Micro Roastery and its owner,
Wolfe's Borough Coffee Inc., may keep selling "Charbucks Blend,"
"Mister Charbucks" and "Mr. Charbucks" coffee.
Circuit Judge Raymond Lohier wrote for a three-judge panel
that Seattle-based Starbucks did not deserve an injunction to
stop Charbucks sales, having failed to prove that consumers
would be confused through a "blurring" of its brand.
The New York-based appeals court let stand a Dec. 2011
finding by U.S. District Judge Laura Taylor Swain in Manhattan
that Charbucks was "only weakly associated with the minimally
similar" Starbucks trademark.
Many retailers, especially those selling luxury or premium
products, file trademark lawsuits against large and small rivals
they believe are misusing their brands, potentially reducing
profit and revenue and damaging their reputation.
A centerpiece of Starbucks' case had been a phone survey of
600 people by the pollster Warren Mitofsky, which found that
"the number one association of the name 'Charbucks' in the minds
of consumers is with the brand 'Starbucks.'"
But the 2nd Circuit said the survey was "fundamentally
flawed," and drew its conclusions from how consumers thought of
"Charbucks" in isolation, not its real world context.
It said that while 39.5 percent of participants thought of
"Starbucks" or "coffee" when asked what came to mind upon
hearing "Charbucks," just 4.4 percent said "Starbucks" or
"coffee house" when asked who might sell a "Charbucks" product.
"Grocery store" was the most popular answer to that question.
"Viewed in light of Starbucks' fame," Lohier wrote, "the
fact that more survey participants did not think of 'Starbucks'
upon hearing 'Charbucks' reinforces the district court's finding
that the marks are only minimally similar."
Starbucks did not immediately respond to requests for
"This is a sound decision," Christopher Cole, a lawyer at
Sheehan, Phinney, Bass & Green representing Black Bear, said in
an interview. "It flows from the dramatic dissimilarity between
how the different products actually appear in commerce and are
seen by consumers."
Starbucks has grown since 1971 from a single store in
Seattle's Pike Place Market into the world's largest coffee shop
chain, with close to 18,000 stores in 60 countries and more than
$14.8 billion of annual revenue.
Black Bear is based in Tuftonboro, New Hampshire. It created
"Charbucks Blend" in 1997, and now sells dark-roast coffee as
"Mister Charbucks" or "Mr. Charbucks."
The 2nd Circuit noted that one reason Black Bear used
"Charbucks" was the public perception that Starbucks uses an
unusually dark roast for its coffee.
The case is Starbucks Corp et al v. Wolfe's Borough Coffee
Inc d/b/a Black Bear Micro Roastery, 2nd U.S. Circuit Court of
Appeals, No. 12-364.