Black
Bear's Misappropriation and Misuse of the Starbucks Mark
12.
Defendant Black Bear has sought improperly to capitalize on Starbucks
investment
in the creation and positive reputation of the Starbucks Mark, and the resulting
popularity
that the Starbucks Mark has attained. Specifically, Black Bear manufactures and
sells
a
blend of roasted coffee under the name "Charbucks Blend." Inclusion of
the term "char" as
part
of the Charbucks name immediately creates, in the minds of many consumers, the
image of
charred
coffee beans, which has obvious negative connotations among potential purchasers
of
coffee
products. Further, "Charbucks" is so similar to "Starbucks"
that consumers who hear or
read
the Charbucks name will instantly think of Starbucks.
13.
After learning of Black Bear's use of the Charbucks name, counsel for
Starbucks
contacted
Black Bear and demanded that it cease and desist from all further use of the
Charbucks
mark.
After extended negotiations. Black Bear and Plaintiffs reached an agreement in
principle
pursuant
to which Black Bear agreed to terminate its use of the Charbucks name. Black
Bear,
however,
refused to finalize this agreement, and continued to sell Charbucks Blend
coffee.
14.
Plaintiffs are informed and believe and thereupon allege that, for some
period of
time
following their negotiations with Black Bear, defendant ceased selling Charbucks
Blend
products.
However, Plaintiffs subsequently learned that Black Bear had renewed its sale of
Charbucks
coffee products, and Plaintiffs therefore renewed their demand that Black Bear
terminate
its use of this mark. To date, however, Black Bear has failed and refused to
comply
with
this demand. Plaintiffs are informed and believe that Black Bear is continuing
to sell
Charbucks
Blend, including to consumers located in the State of New York and the Southern
District
of New York, including by means of orders taken via its Web site and by a toll
free
telephone ordering system.
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NY-H66l57vl