Beware famous marks.  Starbucks has recently lost its 12 year legal battle for trade mark dilution in the US against The Black Bear Micro Roastery in respect of Black Bear’s CHARBUCKS coffee blend.  Asserting its famous mark status under trade mark law, Starbucks claimed trade mark dilution, amongst other claims (which had been dismissed some years previously).  The Judge pulled apart Starbucks’ survey evidence stating that the survey was too narrow (asking only about the similarity between the sounds STARBUCKS and CHARBUCKS and not the use of the marks in commercial context) and that regardless of this Starbucks could only show that 30{ba3215b0bf35eaeb06be458b3396ffbfc50bb9db10c9ff1594dfc3875e90ea48} of respondents associated the marks.  70{ba3215b0bf35eaeb06be458b3396ffbfc50bb9db10c9ff1594dfc3875e90ea48} of respondents associated CHARBUCKS with grilling, restaurant services and charcoal products.  We think that most of these respondents might have thought of Starbucks when presented with CHARBUCKS, but thought it unlikely that Starbucks would be associated with such a brand.

In our view, this is not an unusual finding and the Judges were correct in their findings.  We have found that famous marks achieve a level of infamy which takes them out of the realm of confusion and/or likelihood of association – they simply become too famous.