Trademark Law | Expert Legal Commentary
January 29, 2010
Starbucks v. Wolfe’s Borough Coffee: “Substantial Similarity” Not Required to Prove Dilution by Blurring
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc.
By
Thomas F. Zuber and Jan Jensen of Zuber & Taillieu LLP
The Second Circuit U.S. Court of Appeals held that the Trademark Dilution Revision Act of 2005 (“TDRA”) does not require proof of “substantial similarity” between the marks in question for a trademark owner to establish dilution by blurring. In Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97 (2nd Cir. 2009), the Second Circuit vacated a district court ruling, finding that the District Court improperly applied and weighed the six factors that determine a dilution by blurring claim. In particular, the Second Circuit held that the TDRA does not require that the infringing mark be “substantially similar” to the famous mark, nor does it require that the infringer acted in “bad faith” in using his mark.
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About the Authors
Thomas F. Zuber is a Partner of Zuber & Taillieu LLP, focusing on intellectual property protection and exploitation.
Jan Jensen is a Partner of Zuber & Taillieu LLP, focusing on intellectual property law and media and entertainment law.
Image Credit: ©iStockphoto.com/ryasick
View a PDF of the judicial opinion