Starbucks Corp. v. Wolfe's Borough Coffee, Inc.
Docket: Docket No. 06-0435-CV
Court: Court of Appeals for the Second Circuit; February 14, 2007; Federal Appellate Court
Starbucks Corporation and Starbucks U.S. Brands, L.L.C. sued Wolfe’s Borough Coffee, Inc. in the Southern District of New York, alleging trademark infringement and dilution due to Wolfe's sale of coffee under the names “Mister Charbucks” or “Mr. Charbucks.” Following a bench trial, the District Court ruled on December 23, 2005, that Starbucks did not meet its burden of proof for claims under the Lanham Act, common law unfair competition, or trademark dilution according to both the Federal Trademark Dilution Act (FTDA) and New York General Business Law. After the district court’s ruling, Congress amended the FTDA on October 6, 2006, requiring only a showing of likelihood of dilution instead of actual dilution. This amendment is relevant to Starbucks as it sought injunctive relief regarding dilution. The court noted that the amended statute should apply to this case since it affects the propriety of prospective relief. The appellate court reviewed the district court's conclusions de novo and found that the lower court applied the pre-amendment version of the FTDA, which was interpreted to require proof of actual dilution. The appellate court also expressed uncertainty about whether the New York statute aligned with the amended FTDA. Consequently, it vacated the district court's judgment and remanded the case for further proceedings, while retaining jurisdiction to address issues on appeal following the remand. No opinion was expressed regarding the merits of Starbucks's other arguments.