Case 1:01-cv-05981-LTS-THK Document 107 Filed 06/05/08 Page 1 of 16
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`-------------------------------------------------------x
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`STARBUCKS CORPORATION, a Washington
`corporation; and STARBUCKS U.S. BRANDS
`L.L.C., a Nevada Corporation,
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`Plaintiffs,
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`-v-
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`WOLFE’S BOROUGH COFFEE, INC., a New
`Hampshire corporation d/b/a BLACK BEAR
`MICRO ROASTERY,
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`Defendant.
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`-------------------------------------------------------x
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`No. 01 Civ. 5981 (LTS)(THK)
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`OPINION AND ORDER
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`In this action, Plaintiffs Starbucks Corporation and Starbucks U.S. Brands LLC
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`(collectively “Plaintiff”), seek injunctive relief against Defendant Wolfe’s Borough Coffee, Inc.,
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`d/b/a Black Bear Micro Roastery (“Defendant” or “Black Bear”), on their federal trademark
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`infringement and unfair competition claims brought pursuant to the Lanham Act, 15 U.S.C. §§
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`1114(1), 1125(a); federal and state trademark dilution claims brought pursuant to the newly-
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`amended Federal Trademark Dilution Act (“FTDA”), 15 U.S.C. §§ 1125(c) and 1127, and New
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`York Gen. Bus. Law § 360-l, respectively; and their common-law unfair competition claim. The
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`Court has jurisdiction of the federal claims in this action pursuant to 28 U.S.C. §§ 1331, 1338(a),
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`and 1332(a). The Court has supplemental jurisdiction of Plaintiff’s state statutory and common
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`law claims pursuant to 28 U.S.C. §§ 1367 and 1338(b).
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`STARBU CK S.REM AN D.W PD
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`VERSIO N 6/5/08
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`Case 1:01-cv-05981-LTS-THK Document 107 Filed 06/05/08 Page 2 of 16
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`PROCEDURAL HISTORY AND FACTUAL BACKGROUND
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`The case was tried to the Court over two days on March 15 and March 17, 2005.
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`The Court considered the stipulated facts, trial testimony and evidence carefully, while also
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`observing the demeanor of the witnesses, and considered thoroughly all of the written and oral
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`submissions of counsel. In its December 23, 2005, Opinion and Order (the “December 2005
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`Decision”), the Court found that Plaintiff had failed to carry its burden of demonstrating its
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`entitlement to relief and ordered that judgment be entered in Defendant’s favor with respect to all
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`of Plaintiff’s claims; Plaintiff appealed.
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`Under the FDTA as in effect at the time this Court rendered its December 2005
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`Decision, a showing of actual dilution was required to demonstrate entitlement to injunctive
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`relief. Moseley v. V. Secret Catalogue, Inc., 537 U.S. 418, 433 (2003). Signed into law on
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`October 6, 2006, the Trademark Dilution Revision Act of 2006 (“TDRA”) amended the FTDA to
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`provide, inter alia, that the owner of a famous, distinctive mark is entitled to an injunction against
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`the user of a mark that is likely to cause dilution of the famous mark. 15 U.S.C. § 1125(c)(1).
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`In light of the enactment of the TDRA, the Second Circuit vacated the earlier judgment and
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`remanded the case for further proceedings. In its remand decision, the Second Circuit noted that
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`this Court had already considered “likelihood of trademark dilution” in connection with New
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`York state law, but ordered reconsideration nevertheless because “it is not clear that [the New
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`York] statute is coextensive with the amended [federal] statute [and] the district court’s treatment
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`of the New York statute does not permit a review of whether the analysis conforms with the
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`1
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`Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., No. 01 Civ. 5981 (LTS)(THK),
`2005 WL 3527126 (S.D.N.Y. Dec. 23, 2005).
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`STARBU CK S.REM AN D.W PD
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`VERSIO N 6/5/08
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`Case 1:01-cv-05981-LTS-THK Document 107 Filed 06/05/08 Page 3 of 16
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`amended statute.” Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 477 F.3d 765, 766 (2d Cir.
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`2007). Accordingly, the Court has reconsidered Plaintiff’s claim for injunctive relief in light of
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`the TDRA’s amendment to the FTDA.
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`The parties submitted briefs following the remand, and agreed that no further
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`evidentiary proceedings were required. Having considered thoroughly all of the arguments by
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`counsel on remand, and for the following reasons, the Court finds that Plaintiff has failed to carry
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`its burden of demonstrating its entitlement to relief under the FTDA, as amended. For
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`substantially the reasons detailed in the December 2005 Decision and as explained below, the
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`Court finds that Plaintiff has also failed to demonstrate its entitlement to relief on its: (1) federal
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`trademark infringement and unfair competition claims brought pursuant to the Lanham Act; (2)
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`state trademark dilution claims brought pursuant to New York Gen. Bus. Law § 360-1; and (3)
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`unfair competition claim under the common law. The December 2005 Decision, which is hereby
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`incorporated by reference insofar as it addresses the relevant facts and Plaintiff’s non-FTDA
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`claims, and this Opinion and Order, constitute the Court’s findings of fact and conclusions of law
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`in accordance with Rule 52 of the Federal Rules of Civil Procedure.
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`The Court’s findings as to the material background facts of this matter are detailed
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`in the December 2005 Decision.
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`DISCUSSION
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`The principal issue for examination on remand is whether, in light of the 2006
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`amendment to the FTDA, Plaintiff is entitled to injunctive relief based on the likelihood that
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`Defendant’s challenged activities will dilute Plaintiff’s rights in its Starbucks trademarks. To
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`STARBU CK S.REM AN D.W PD
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`VERSIO N 6/5/08
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`Case 1:01-cv-05981-LTS-THK Document 107 Filed 06/05/08 Page 4 of 16
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`obtain such relief, Plaintiff must demonstrate that Defendant’s use of its “Mr. Charbucks” and
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`“Mister Charbucks” marks for one of its coffee blend products creates associations arising from
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`similarity to the Starbucks marks that are likely to impair the distinctiveness of the Starbucks
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`mark or tarnish that mark by harming its reputation. In the December 2005 Decision, the Court
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`found the record insufficient to demonstrate the actual dilution that was required under then-
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`current law.
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`The TDRA made a number of significant changes to the FTDA, three of which are
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`relevant to the instant matter. First and foremost, a plaintiff must merely show a “likelihood of
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`2
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` The amended FTDA reads in relevant part as follows:
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`(c) Dilution by blurring; dilution by tarnishment.
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`(1)
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`Injunctive relief. Subject to the principles of equity, the owner of a
`famous mark that is distinctive, inherently or through acquired
`distinctiveness, shall be entitled to an injunction against another
`person who, at any time after the owner's mark has become
`famous, commences use of a mark or trade name in commerce that
`is likely to cause dilution by blurring or dilution by tarnishment of
`the famous mark, regardless of the presence or absence of actual or
`likely confusion, of competition, or of actual economic injury.
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`(2)
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`Definitions.
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`* * *
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`(B)
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`For purposes of paragraph (1), "dilution by blurring" is
`association arising from the similarity between a mark or
`trade name and a famous mark that impairs the
`distinctiveness of the famous mark. In determining whether
`a mark or trade name is likely to cause dilution by blurring,
`the court may consider all relevant factors, including the
`following:
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`(i)
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`The degree of similarity between the mark or trade
`name and the famous mark.
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`STARBU CK S.REM AN D.W PD
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`VERSIO N 6/5/08
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`Case 1:01-cv-05981-LTS-THK Document 107 Filed 06/05/08 Page 5 of 16
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`dilution” rather than actual dilution. 15 U.S.C. § 1125(c)(1). Second, the amended statute
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`explicitly recognizes two types of dilution: dilution by blurring and dilution by tarnishment. 15
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`U.S.C. § 1125(c)(2). Third, the amended statute defines both blurring and tarnishment, setting
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`forth six non-exclusive factors for courts to consider in assessing the likelihood of dilution by
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`blurring. 15 U.S.C. § 1125(c)(2)(B).
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`Dilution by Blurring Claims
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`FTDA Claim
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`“In previous cases, blurring has typically involved ‘the whittling away of an
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`established trademark's selling power through its unauthorized use by others upon dissimilar
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`products.’ Thus, dilution by ‘blurring’ may occur where the defendant uses or modifies the
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`(ii)
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`(iii)
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`The degree of inherent or acquired distinctiveness
`of the famous mark.
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`The extent to which the owner of the famous mark
`is engaging in substantially exclusive use of the
`mark.
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`(iv)
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`The degree of recognition of the famous mark.
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`(v) Whether the user of the mark or trade name
`intended to create an association with the famous
`mark.
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`(vi) Any actual association between the mark or trade
`name and the famous mark.
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`(C)
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`For purposes of paragraph (1), "dilution by tarnishment" is
`association arising from the similarity between a mark or trade
`name and a famous mark that harms the reputation of the famous
`mark.
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`15 U.S.C.A. § 1125(c) (West Supp. 2008).
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`STARBU CK S.REM AN D.W PD
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`VERSIO N 6/5/08
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`plaintiff's trademark to identify the defendant's goods and services, raising the possibility that the
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`mark will lose its ability to serve as a unique identifier of the plaintiff's product.” Deere & Co. v.
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`MTD Prods., 41 F.3d 39, 43 (2d Cir. 1994), quoting Mead Data Central, Inc. v. Toyota Motor
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`Sales, U.S.A., Inc., 875 F.2d 1026, 1031 (2d Cir. 1989). Public association of the trademark with
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`other goods and services, injuring the selling power of the plaintiff’s mark as a unique identifier,
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`constitutes such blurring. See Hormel Foods Corp. v. Jim Henson Prods. Corp., 73 F.3d 497,
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`506 (2d Cir. 1996). Mere mental association among consumers between the senior and junior
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`mark without more was, however, insufficient to establish dilution by blurring. Louis Vuitton
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`Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 118-119 (2d Cir 2006).
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`The amended FTDA defines dilution by blurring similarly, as “[an] association
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`arising from the similarity between a mark or trade name and a famous mark that impairs the
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`distinctiveness of the famous mark.” 15 U.S.C.A. § 1125(c)(2)(B) (emphasis added). The
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`statute instructs the Court to consider all relevant factors, six of which are specifically identified:
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`“(i) [t]he degree of similarity between the mark or trade name and the famous mark[;] (ii) [t]he
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`degree of inherent or acquired distinctiveness of the famous mark[;] (iii) [t]he extent to which the
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`owner of the famous mark is engaging in substantially exclusive use of the mark[;] (iv) [t]he
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`degree of recognition of the famous mark[;] (v) [w]hether the user of the mark or trade name
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`intended to create an association with the famous mark[;] and (vi) [a]ny actual association
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`between the mark or trade name and the famous mark.” Id.
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`3
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`Under New York law, courts generally consider six factors in determining
`the likelihood of dilution by blurring: (i) the similarity of the marks; (ii)
`the similarity of the products covered; (iii) the sophistication of the
`consumers; (iv) the existence of predatory intent; (v) the renown of the
`senior mark; and (vi) the renown of the junior mark. The Sports
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`STARBU CK S.REM AN D.W PD
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`In the December 2005 Decision, the Court found that, although the evidence
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`indicated that Defendant’s principal intended, in adopting the “Charbucks” moniker, to evoke
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`associations with the sort of dark-roasted coffee purportedly favored by Starbucks’ clientele, the
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`evidence did not demonstrate any actual dimunition of the capacity of the Starbucks marks to
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`serve as unique identifiers of Starbucks’ products by reason of Defendant’s commercial activities
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`under the former provisions of the FTDA, or any likelihood of such dimunition under New York
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`state law. See Starbucks, 2005 WL 3527126, at *9. The Court now turns to an examination,
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`under the amended provisions of the FTDA, of whether the record demonstrates likelihood of
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`dilution of the Starbucks marks by Defendant’s use of the “Mr. Charbucks” and “Mister
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`Charbucks” marks.
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`A. Similarity of the Marks
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`In addressing Plaintiff’s trademark infringement claim in its December 2005
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`Decision, the Court found strong similarity between the core term “Charbucks” and Plaintiff’s
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`“Starbucks” mark, but also explained that, as that term was used by Defendant in the “Mr.
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`Charbucks” name for its coffee blend and in the packaging of Defendant’s product, the similarity
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`factor favored Plaintiff only slightly, if at all, in assessing the likelihood of consumer confusion
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`as to the source of Defendant’s products or as to a connection between Starbucks and Black Bear.
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`The question of similarity is also highly relevant in the dilution context.
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`Plaintiff’s and Defendant’s marks are far from identical. “In order to establish dilution by
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`Authority, Inc. v. Prime Hospitality Group, 89 F.3d 955, 966 (2d Cir.
`1996).
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`STARBU CK S.REM AN D.W PD
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`VERSIO N 6/5/08
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`blurring, the two marks must not only be similar, they must be ‘very’ or ‘substantially’ similar.”
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`Hormel Foods Corp., 73 F.3d at 503, quoting Mead Data Central, 875 F.2d at 1029. As
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`explained in the December 2005 Decision, Defendant’s marks appear on packaging very different
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`from that used by Starbucks. There is no evidence that Defendant uses “Charbucks” as a stand-
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`alone term. Rather, it is used with “Mr.” or “Mister” on Defendant’s distinctive packaging or in
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`product lists. For these reasons, the marks at issue here are not substantially similar. This
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`dissimilarity alone is sufficient to defeat Plaintiff’s blurring claim, see Hormel Foods Corp., 73
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`F.3d at 506, and in any event, this factor at a minimum weighs strongly against Plaintiff in the
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`dilution analysis.
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`B. Distinctiveness of the Famous Mark
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`In the December 2005 Decision, the Court found that:
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`[o]ver the past 33 years, Starbucks has grown from a single coffee shop to
`over 8,700 retail locations across the United States and the world . . . From
`the year 2000 to 2003, Starbucks spent over $136 million on advertising,
`promotion and related marketing activities . . . [and] [v]irtually all of
`Starbucks’ advertising prominently features (or, in the case of radio,
`mentions) the Starbucks Mark . . . [I]n recent years, Starbucks products or
`retail stores have been featured prominently in a number of popular motion
`pictures and television shows which have been seen by millions of viewers
`in theaters or on television or video.
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`Starbucks, 2005 WL 3527126, *1-2 (citations omitted). For substantially these reasons, as well
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`as the reasons detailed in the Court’s other findings relating to distinctiveness in the December
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`2005 Decision, the distinctiveness factor favors Plaintiff in the blurring analysis.
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`STARBU CK S.REM AN D.W PD
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`C. Substantially Exclusive Use of Famous Mark by Owner
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`Starbucks devotes substantial effort to policing its registered Starbucks
`Marks. Starbucks has a policy of following up on uses that it deems to be
`infringing and demanding that the use be terminated. Starbucks routinely
`sends cease and desist letters and, if necessary, commences litigation in
`support of these efforts.
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`Starbucks, 2005 WL 3527126, *2 (citations omitted). In its December 2005 Decision, the Court
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`also recognized Starbucks’ efforts, including the expenditure of substantial time and money, in
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`advertising and promoting the Starbucks Marks throughout the United States and elsewhere. Id.
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`This factor also weighs in favor of Plaintiff in the blurring analysis.
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`D. Degree of Recognition of the Famous Mark
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`Over the past 33 years, Starbucks has grown from a single coffee shop to
`over 8,700 retail locations across the United States and the world.
`Starbucks is now the largest and best-known purveyor of speciality coffees
`and coffee products in North America. Starbucks owns, or operates
`through affiliates and licensees, more than 6,600 retail stores in the United
`States and Canada . . . More than 20 million customers visit Starbucks’
`United States stores each week.
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`Starbucks, 2005 WL 3527126, *1 (citations omitted). This factor, too, weighs in favor of
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`Plaintiff in the blurring analysis.
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`E. Intent to Create an Association with the Famous Mark
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`As noted above, Defendant Black Bear intended to create an association with
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`Plaintiff’s mark by wordplay – specifically, by alluding to the dark roasted characteristic of the
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`Starbucks product. Such intent is not sufficient in and of itself, however, to demonstrate a
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`likelihood of dilution by blurring. In the blurring context, the ultimate question is whether the
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`STARBU CK S.REM AN D.W PD
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`Case 1:01-cv-05981-LTS-THK Document 107 Filed 06/05/08 Page 10 of 16
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`intended association is likely to impair the distinctiveness of Plaintiff’s famous mark. Here, the
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`record makes clear that the distinctiveness of the character of Starbucks coffee products is key to
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`the achievement of Defendant’s stated goal, which is to signal to purchasers that “Mr.
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`Charbucks” is a very dark roast and unlike Defendant’s other coffee products. Such an intended
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`association, especially where, as here, Defendant’s mark is not substantially similar to Plaintiff’s,
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`is not indicative of bad faith or of an association likely to cause dilution by blurring. Cf. Louis
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`Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 267 (4th Cir. 2007) (no
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`trademark blurring found where parody mimics and/or associates with the famous mark, but does
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`not simultaneously communicate that it is the famous mark). Accordingly, the evidence is
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`insufficient to establish Defendant’s intent to create an unlawful association with its famous
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`mark and this factor weighs against Plaintiff.
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`F. Actual Association with the Famous Mark
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` The Court must also consider any actual association between the mark or trade
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`name and the famous mark. 11 U.S.C. §1125(c)(2)(B)(vi). Survey results do show, as explained
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`in the December 2005 Decision, some consumer association between the spoken, standalone
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`term “Charbucks” and Plaintiff’s Starbucks mark. Starbucks, 2005 WL 3527126, *5. However,
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`as noted in that Decision, “[the evidence] is insufficient to make the actual confusion factor
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`weigh in Plaintiff’s favor to any significant degree.” Id.
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`As found in the December 2005 Decision and as shown in the foregoing
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`examination of the factors specified in the amended FTDA, Starbucks’ marks are distinctive and
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`famous. Thus, several of the specified factors weigh in its favor. However, Defendant’s marks,
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`as used in commerce, are not substantially similar to Plaintiffs’ Starbucks marks, and the
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`STARBU CK S.REM AN D.W PD
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`association Defendant intended to evoke in consumers’ minds through its use of a playful
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`dissimilar mark is not one that would be likely to dilute the Starbucks marks as unique identifiers
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`of Starbucks’ goods and services. Rather, it is dependent on an identification of those marks
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`with Starbucks’ own products and a characteristic of the taste of those products. The record is,
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`therefore, insufficient to demonstrate the requisite likelihood that the association arising from the
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`similarity of the core terms is likely to impair the distinctiveness of Starbucks’ mark, and
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`Plaintiff is not entitled to injunctive relief under that statute. Cf. N.Y. Stock Exch., Inc. v. N.Y.,
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`N.Y. Hotel, LLC, 293 F.3d 550, 558 (2d Cir. 2002) (refusing to grant an injunction where
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`parodic use of a similar mark emphasized that a casino offered possible profits and risks similar
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`to those on the New York Stock Exchange).
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`New York Statutory Claim
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`Under New York dilution law, courts generally consider six factors in determining
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`the likelihood of blurring: (i) the similarity of the marks; (ii) the similarity of the products
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`covered; (iii) the sophistication of the consumers; (iv) the existence of predatory intent; (v) the
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`renown of the senior mark; and (vi) the renown of the junior mark. The Sports Authority, Inc.,
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`89 F.3d at 966. For substantially the reasons explained above, the similarity of the marks and the
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`predatory intent factors favor Defendant because the marks, as used, are dissimilar and the record
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`does not demonstrate a predatory intent on Defendant’s part. In light of the principal concern of
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`dilution law – diminution of the capacity of the senior user’s mark to serve as a unique identifier
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`– these factors weigh more heavily in the analysis than the renown and product similarity factors
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`which do, for substantially the reasons explained above and those laid out in the December 2005
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`STARBU CK S.REM AN D.W PD
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`Decision, favor Plaintiff.
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`As to the consumer sophistication factor, Defendant’s CEO and co-owner gave
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`unrebutted testimony at trial that his consumers were highly discriminating, generally repeat
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`customers, including many retailers. See Tr. Trans. 79:22-25, 93:23-25, 94:4-6, 94:17-18;
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`W.W.W. Pharmaceutical Co. v. Gillette Co., 984 F.2d 567, 576 (2d Cir. 1993) (finding that
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`“retailers are assumed to be more sophisticated buyers”). Starbucks’ Director of Brand
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`Management testified at trial that Starbucks’ customers are sophisticated enough to have a
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`“specific set of expectations around the drink they have enjoyed in store” and that Starbucks is a
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`premium product priced toward the high end of coffee products. See Tr. Trans 22:18-19 and
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`39:24-40:3. The Court found “based on the distinctive packaging and separate retailing channels
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`of the parties’ respective products, that an ordinary purchaser is very unlikely to mistake
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`Defendant’s ‘Mr. Charbucks Blend’ or ‘Charbucks Blend’ product for one offered by Starbucks,
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`whether or not that person is highly discriminating.” Starbucks, 2005 WL 3527126, at *6.
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`For substantially the reasons discussed in the Court’s December 2005 Decision in
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`connection with the Court’s consumer sophistication finding in connection with its trademark
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`infringement analysis, the Court finds that the consumer sophistication factor also favors
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`Defendant in the dilution-by-blurring context.
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`Thus, while, as in the FTDA analysis, several of the relevant factors favor
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`Plaintiff, the record is insufficient to establish Plaintiff’s right to injunctive relief because it fails
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`to demonstrate the requisite likelihood of dilution by blurring in light of the similarity of the
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`marks and predatory intent factors which, as explained above, weigh strongly in Defendant’s
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`favor. For these reasons, and for the reasons explained in the December 2005 Decision, Plaintiff
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`STARBU CK S.REM AN D.W PD
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`Case 1:01-cv-05981-LTS-THK Document 107 Filed 06/05/08 Page 13 of 16
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`has failed to demonstrate that Defendant’s use of the “Mr. Charbucks” mark is likely to impair
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`the distinctiveness of Starbucks’ mark, and thus to blur Plaintiff’s marks within the meaning of
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`New York anti-dilution law.
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`Dilution by Tarnishment Claims
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`Dilution by tarnishment “is usually found where a distinctive mark is depicted in a
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`context of sexual activity, obscenity, or illegal activity.” Deere & Co., 41 F.3d at 44. The
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`amended FTDA defines dilution by tarnishment as “an association arising from the similarity
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`between a mark or trade name and a famous mark that harms the reputation of the famous mark.”
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`15 U.S.C. § 1125(c)(2)(C) (emphasis added). In its December 2005 Decision, the Court carefully
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`considered all of Plaintiff’s phone survey evidence and expert conclusions before concluding that
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`Plaintiff had shown neither actual dilution under the former version of the FTDA nor a likelihood
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`of dilution under New York state law. See Starbucks, 2005 WL 3527126 at *9. The utility of
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`the “Mr. Charbucks” mark to Defendant depends on the association being one to something that
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`is attractive or consumer-appealing. As explained in the December 2005 Decision, the survey
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`comments about the characteristics of a product called “Charbucks” are not necessarily negative
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`and the record lacks sufficient evidence of inferior quality to sustain Plaintiff’s burden of
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`demonstrating that the association of Defendant’s mark with Plaintiff’s is likely to harm the
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`reputation of Plaintiff’s marks.
`4
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`4
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`In its December 2005 Decision, the Court noted that the survey used the
`open-ended question “If the name ‘Charbucks’ were used for a type of
`coffee, how would you describe the coffee?,” and found that only 6.3% of
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`STARBU CK S.REM AN D.W PD
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`Case 1:01-cv-05981-LTS-THK Document 107 Filed 06/05/08 Page 14 of 16
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`On remand, Starbucks places particular emphasis on a newly-calculated statistic
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`indicating that, of the 30.5% of respondents who had an immediate association between
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`“Charbucks” and “Starbucks,” 62% said they would have a negative impression of a coffee called
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`“Charbucks.” This statistic says nothing, however, about the likelihood that those respondents’
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`negative impression of a coffee called “Charbucks” would affect detrimentally their perception of
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`Starbucks. It would be just as reasonable to conclude that their negative impressions of a
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`hypothetical coffee named “Charbucks” were based on their strong allegiance to Starbucks,
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`something Defendant observes by noting that 71% of those respondents had a positive
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`impression of Starbucks. Additionally, the record at trial established that Defendant’s product is
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`a high-quality coffee with rigorous quality control mechanisms. See Tr. Trans. at 82:7-84:15,
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`86:8-87:1, 89:6-15; see Starbucks, 2005 WL 3527126, at *6. Thus, looking beyond the
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`inferences argued from the hypothetical phone survey, the record demonstrates that the
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`Defendant’s actual “Mr. Charbucks” coffee product is of such a quality that its association with
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`Starbucks is unlikely to be damaging.
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`the survey respondents provided what was characterized as a “generally
`negative” response. See Starbucks, 2005 WL 3527126, at *9. Further,
`while 15.2% of respondents described a hypothetical coffee named
`Charbucks as “charred,” “burnt,” “bitter” or “smokey,” and 34.9%
`described the hypothetical flavor as “strong,” “dark,” “black,” or “rich-
`flavoured,” many of those respondents expressed a favorable view of a
`coffee with these qualities. Id. Other reported responses to the open-
`ended question included “general positive comments” (7.9%) and
`“special/original/expensive” (4.7%). Id. “Don’t know” was another very
`popular response, at 22.6%. Id. With respect to the linkage between
`Starbucks and Charbucks, the court found that survey respondents
`generally described it as a “joke” or a “ripoff,” and none of the
`respondents appeared to have incorporated negative references to
`Starbucks products in their responses to the open-ended question regarding
`“Charbucks.” Id.
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`STARBU CK S.REM AN D.W PD
`
`VERSIO N 6/5/08
`
`14
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`

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`Case 1:01-cv-05981-LTS-THK Document 107 Filed 06/05/08 Page 15 of 16
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`For these reasons, and for substantially the reasons discussed in the December
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`2005 Decision, Plaintiff has not demonstrated the likelihood of dilution by tarnishment that is
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`required to support injunctive relief under either the FTDA or New York law.
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`Trademark Infringement Claims
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`After having balanced the Polaroid factors as detailed in the December 2005
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`Decision, and for substantially the reasons detailed in the December 2005 Decision, the Court
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`concludes that Plaintiff is unable to prove the requisite likelihood of consumer confusion as to
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`source, sponsorship, or association of Defendant’s goods with the Starbucks mark. Accordingly,
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`Plaintiff’s trademark infringement claim under the Lanham Act, as well as its common law unfair
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`competition claim, which is analyzed under the same legal standard as a claim for trademark
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`infringement under the Lanham Act, fail.
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`
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`CONCLUSION
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`For the foregoing reasons, the Court finds that Plaintiff has failed to carry its
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`burden of demonstrating its entitlement to relief under the amended FTDA, and that Plaintiff has
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`failed to meet its burden of demonstrating entitlement to injunctive relief under the anti-
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`infringement provisions of the Lanham Act or the New York law of unfair competition. The
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`Court adopts and reinstates its December 2005 findings of fact and conclusions of law with
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`respect to Plaintiff’s federal trademark infringement and unfair competition claims brought
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`pursuant to the Lanham Act, Plaintiff’s state trademark dilution claims brought pursuant to New
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`STARBU CK S.REM AN D.W PD
`
`VERSIO N 6/5/08
`
`15
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`

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`Case 1:01-cv-05981-LTS-THK Document 107 Filed 06/05/08 Page 16 of 16