A seller of packaged coffees did not dilute the trademarks of coffee seller Starbucks Corp. by marketing a blend of roasted coffee under the names "Mr. Charbucks" and "Mister Charbucks," the federal district court in New York City has ruled. The parties' respective marks were not substantially similar, and the Charbucks marks were not likely to blur or tarnish the Starbucks marks.

The Charbucks marks appeared on packaging with a very different appearance from that used by Starbucks. There was no evidence that the defending seller used "Charbucks" as a stand-alone term; the term was only used with "Mr." or "Mister" on the defending seller's distinctive packaging or in product lists. This dissimilarity alone was enough to defeat Starbucks' blurring claim under federal law, the court said. In addition, there was no evidence that the Charbucks marks were likely to impair the distinctiveness of the Starbucks marks. Although the defending seller intended to create an association with the Starbucks product by wordplay, the distinctiveness of the character of Starbucks coffee products was key to the achievement of the defending seller's stated goal --to signal to purchasers that "Mr. Charbucks" was a very dark roast, unlike its other coffee products.

As to tarnishment, Starbucks failed to establish that consumers' negative perceptions, if any, of the word "Charbucks" in association with coffee would have a negative impact on Starbucks' brand name recognition. There was insufficient evidence that the Charbucks product was of such inferior quality that its association with Starbucks would harm the reputation of the Starbucks marks.

Starbucks Corp., SD N.Y., ¶61,252