Plaintiffs-counter-defendants-appellants Starbucks Corporation and Starbucks U.S. Brands, L.L.C. (collectively, "Starbucks") brought suit in the United States District Court for the Southern District of New York (Swain, J.) against defendant counterclaimant-appellee Wolfe's Borough Coffee, Inc. ("Wolfe's"). Starbucks alleged that Wolfe's current sale of coffee under the name "Mister Charbucks" or "Mr. Charbucks" infringes and dilutes the "Starbucks" trademark for coffee.
Following a bench trial, the District Court concluded, in an Order
filed December 23, 2005, that Starbucks had failed to carry its burden
of proving trademark infringement and unfair competition under the
Lanham Act, common law unfair competition, or trademark dilution under
either the Federal Trademark Dilution Act ("FTDA"), 15 U.S.C. §§
1125(c), 1127, or New York Gen. Bus.
16 Law § 360-1. Starbucks Corp.
v. Wolfe's Borough Coffee, Inc., No. 01-cv-5981, 2005 WL 3527126
(S.D.N.Y. Dec. 23, 2005). From the ensuing judgment, Starbucks appeals.
Subsequent to the district court's order, Congress amended the FTDA in response to the Supreme Court's decision in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 433 (2003), which had construed the FTDA to require a showing of actual dilution, as opposed to a likelihood of dilution. The FTDA, as amendedeffective October 6, 2006, entitles the owner of a famous, distinctive mark to an injunction against the user of a mark that is "likely to cause dilution" of the famous mark. 15 U.S.C. § 1125(c)(1) (hereinafter, the "amended statute"). The amended statute applies to this case to the extent that Starbucks has sought injunctive relief on the issue of dilution.
. . .
Appeal from an order of the United States District Court for the Southern District of New York (Swain, J.), which entered judgment in defendant's favor on all counts on December 28, 2005, following a bench trial. The judgment of the district court is vacated and the case is remanded for further proceedings.
