October 10, 1997

Starbucks Coffee Company

Polly Kim Close, Corporate Counsel

2401 Utah Avenue South

Seattle, WA 98134

 

VIA FAX (206) 442-7793 & 1st CLASS MAIL

Re:   Wolfe's Borough Coffee, Inc. d/b/a The Black Bear Micro Roastery

 

Dear Ms. Close:

        As previously indicated, this office represents James 0. Clark, III and Wolfe's Borough Coffee Inc. This letter will serve as a formal written response to the substance of your letters dated August 15, and September 9, 1997 sent to Mr. Clark, directly.

       The issue in question concerns the two words "Charbucks Blend," which have been employed as a trademark by Wolfe's Borough Coffee Inc. for one of its coffee products. The two words constituting this trademark are recognizably different and distinct from the words “Starbucks Coffee”.

        Accordingly, at the outset, let me emphasize that despite your claims that the use of the trade name of "Charbucks Blend" by the Black Bear Micro Roastery Wolfe's Borough is disparaging and a dilutive form of the Starbucks' trademark, it is the position of Wolfe's Borough that is not correct. Emphatically, Wolfe's Borough Coffee, Inc. categorically denies that the use of the "Charbucks Blend" name either tarnishes Starbucks' reputation or dilutes any goodwill associated with the Starbucks name and Wolfe's Borough's use of same is not an act of unfair competition, as you alleges in your August 15, 1997 letter. Wolfe's Borough is very cognizant of what constitutes protected rights, and what are trademark infringements. Wolfe's Borough's use of' Charbucks Blend" is not violative of any protective right of Starbucks.

        As regards the issue of a likelihood of confusion to the purchasing public, in their August 21,1997 letter, Wolfe's Borough, in a better effort to understand the basis for your elucidated August 15, 1997 claims, respectfully requested that you:

 

 

              “If you have any evidence that any consumer has been confused by our usage of

               the name CHARBUCKS BLEND on our products labels, we would ask you to

               please present, and document that evidence to us.”

 

             “If you have any evidence that our usage of the name CHARBUCKS BLEND on our

               product labels has caused your trademark to be diluted in the minds of

               consumers, we would ask you to please present, and document that evidence to

               us.”

 

As far as I know, as of today's date, you have furnished no documentation other that you veil comments in your August 15,1997 letter, and repeated, without any substantiations, in your September 9, 1997 letter. Thus, it must be assumed that there are no instances of actual confusion nor is there any reasonable and objective basis for believing that a likelihood of confusion might occur in the future. No evidence exists to date, which could support such an allegation or contention.

         If you continue to insist that a likelihood of confusion may occur, I suggest that once you have complied with Wolfe's Borough's request, this office would be happy to discuss further the potential merits, or the lack thereof, of

any claim for any trademark infringement, or any claim of disparagement; however, to continue with that, at this time, would be disruptive of any efforts toward resolution.

        If your client feels nevertheless that some conflict between your client's business interests and those of Wolfe's Borough Coffee Inc. remains or might possible yet evolve, we would be most happy to discuss and resolve the problems in a reasonable and amicable manner. I am sure that a successful business enterprise is of utmost concern to all persons; and an objective and equitable resolution of business interests is seen as far preferable to a senseless litigation.

       Having said that, the purpose of this letter is to try to see if a practical solution to a problem can be reached. As indicated in my client's August 21, 1997 letter, Wolfe's Borough is not in a financial picture to defend in federal court either for a Lanham Act violation claim or a Trademark Infringement action. Your September 9, 1997 letter implies that you too would like to see if a resolution can be accomplished.

       While Wolfe's Borough can comply with certain of your request such as how many unfilled packages there are currently in inventory; how many filled packages are in inventory; estimated costs to re label, these request seem to miss the major mark of the foundation of a solution. The overriding issue is how, from a public relations perspective is this "name change" going to be accomplished. Irrespective of your position, Wolfe's Borough's position, as associated with their choice of the name, was spelled out a great length in their response to you.  Now if they are being asked to change that, and for the sake of this letter we will assume, without any basis in law, than how are the mechanics of this to be accomplished. What is going to be the new name, and what is the reason for the change. How can Starbucks and Wolfe's Borough work together to bring about the desired results for both companies.  How can this transition be made an advantageous procedure for both concerned.

       Obviously, the resources at Starbucks are much greater than that of Wolfe's Borough. We would implore you to be creative such that this creativity can be a very positive step. Wolfe's Borough has already been approached by certain Boston area media about the situation, and has vowed to remain silent, with the hope and expectation that an amicable solution can be reached which will put both Starbucks and Wolfe's Borough in a very optimistic position going forward.

       With their very limited resources, Wolfe's Borough request that Starbucks undertake the selection of a new name, the details of an appropriate publicity campaign detailing why there is a new name, compensation for change of their name, and compensation for their legal expenses incurred.

       After you have reviewed this letter, please contact the undersigned.  Thanking you in advance for your anticipated cooperation, I am

 

Very truly yours,

 

Steven S. Konowitz

 SSK/sft

cc: James 0. Cark. III