The third time was not the charm for Starbucks in their attempt to prevent a regional micro roastery from poking fun at Starbuck’s notorious reputation for over roasting coffee. Starting over 14 years ago, Starbucks sued New Hampshire-based Black Bear Micro Roastery over use of the term “Charbucks” as part of their product lines. Two trials and two appeals later, the Southern District of New York found, for the third time, that Black Bear was allowed to use Charbucks as a trademark for their goods.

Originally adopted as a spoof, Black Bear used the trademark “Charbucks” for a new line of dark roast coffee at a time of anti-Starbucks sentiment centered on the coffee goliath’s buying of a popular Boston coffee company. In 1997, Starbucks sent a cease and desist letter and eventually sued Black Bear for trademark dilution because of their use of Charbucks. The first trial held the plaintiffs did not prove their case for dilution. However, on appeal, the case was remanded to the district court to be evaluated under the newly passed Trademark Dilution Revision Act of 2006 (TDRA) that set new standards for dilution.

In the second trial, the court held again there was no trademark dilution. And again, the case was remanded to be considered under a new standard for similarity between marks necessary to show dilution. Finally, in this the third, and perhaps final, trial the court found there was not a sufficient amount of similarity between Charbucks and Starbucks to show dilution. A key factor in the court’s continuing position of no dilution was Black Bear’s using “Charbucks” as part of the mark “Mister Charbucks” or “Charbucks Blend”. Even though the disputed marks are only separated by two letters, that difference was enough for the courts. While there is a chance for Starbucks to appeal, this decade and a half saga may finally be at an end.

A three-member panel of the National Arbitration Forum unanimously denied the Complaint of Electronic Arts, Inc. (EA) over the domain name SSX.com. (Click here for the decision). There was no dispute that EA owned a trademark in SSX. The Panel found, however, that EA had failed to “establish[] a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).” Importantly, the panel held that, “[t]he buying and selling of generic domain names is a bona fide offering of goods under Policy ¶ 4(c)(i). ” The Panel also declined to find that the brief appearance of pay-per-click links to video games on a parked page, located at www.ssx.com, negated the registrant’s legitimate rights to the domain name. Even though the Panel did not need to address the issue of bad faith, it chose to, finding that: “Respondent has shown that it is a generic domain name buyer and seller. Respondent purchased the disputed domain name as part of a portfolio of generic domain names. This is a legitimate use of the disputed domain name, and does not show that Respondent registered or used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).”

This is a great decision for those who invest in generic and descriptive domain names as a business. It represents a clear limitation on the rights of trademark holders in words and letters that are common or generic.

It’s the time of year again when the weather turns cold and thoughts turn to the Holidays — except that it’s raining outside and a balmy 58 degrees in New York. No, we’re not offering a holiday sale on trademark registrations, although they do make great gifts. Today we are thinking about our favorite subject — trademark mills — and what a disservice they do for unwitting clients. If you were fortunate to catch our latest video, then you caught my reference to trademark searches I ran on Trademarkia and another site for “MY GOOGLE” and “YAHOOO.” Both sites told me that these marks were available for registration and encouraged me to file an application right away. A video on You Tube shows users how to file a trademark application on Trademarkia in under five minutes — and to think that I’ve been wasting seven or eight hours on conducting clearance searches, ordering and reviewing search reports, and drafting clearance letters…

Lest my griping sound like sour grapes, I actually care what happens to clients when they are given the misleading impression that they can strip a complex, thought intensive process on which important business decisions are being made into a five minute exercise in filling out a form. Although my examples of YAHOOO and MY GOOGLE are extreme, because most people wouldn’t think that they could use those marks, they are intended to show exactly how useless and harmful at the same time the “do-it-yourself” search window on the trademark mill sites can be. The lack of transparency and any semblance of legal advice makes these services dangerous. Clients are effectively blindly guessing, but leave with the impression that they’ve done a search and can rely on the results. That’s not to say that there isn’t a place in the world for an automated trademark filing service, but the risks and the tradeoffs should be disclosed up-front, so that clients know what the potential consequences of not using an actual trademark attorney are.

The latest from TMA Studios. (click here for our new video). No, Bob Parsons doesn’t shoot an elephant.