Fax sent on August 21, 1997

Sender: Jim Clark

 The Black Bear Micro Roastery Company

Recipient: Polly Kim Close
 Starbucks Corporation

Message:

 

Dear Polly,

            I am responding to your 8/15/97 facsimile transmission to me regarding the usage of the name CHARBUCKS.

            In reference to your reference regarding publicity from this matter benefiting The Black Bear Micro Roastery, let me set the record straight.  I stated, during our first phone conversation on 8/13/97 that a small company can gain a lot of name recognition by being sued by a large, well known corporation.  What you left out was that I also stated to you that I held Starbucks in very high regard because of the beneficial market conditions that had been created by the success of Starbucks.  I also stated that I held Starbucks in extremely high regard because of the unusually dignified way in which the employees of Starbucks are treated, and because of the financial support that Starbucks had made over the years to the people who grow, pick, and process coffee beans.   I stated clearly to you that I had absolutely no wish to gain name recognition at the expense of Starbucks.  During our second phone conversation on 8/14/97, I stated to you that I was very concerned about the negative publicity The Black Bear Micro Roastery might receive were we to abruptly cave in to the demands of Starbucks and suddenly pull the plug on CHARBUCKS BLEND without any proper regard or consideration for the interests of our customers.  If you are going to quote me , I would respectfully ask that you do so its proper context.

            The following points should make our position clear and constitute our response to your facsimile transmission to us on 8/15/97.

During Februrary, 1997, we developed a dark roasted blend of coffee, that we have named CHARBUCKS BLEND, after a number of Boston area consumers had, over a period of about two months, been asking us to produce a blend that was darker roasted than what was currently our darkest roast.

This presented us with a genuine dilemma.  We had carefully developed our reputation by roasting coffee a certain way, and now we had some consumers asking us to do what we were very much opposed to.  Since we are a business, and as such, serving the need of our customers as much as is possible, the decision was finally made to create what we currently market as CHARBUCKS BLEND, which was first shipped to customers on 2/24/97.

When we were trying to come up with a name for the new blend, a friend who had heard the term "charbucks" used in the past, jokingly suggested using it.  We thought it would be perfect for our purposes, since part of our image, as far as naming products in the past is concerned, was projecting a sense of humor.  Examples are the names SIN, DARK SIN, and CARDINAL SIN that we use for three of our flavored coffees.  By so boldly naming the coffee using the term "char" as a part of the name, it also moderated our uneasiness about producing such a darkly roasted coffee.

The purpose of using the name CHARBUCKS BLEND was to convey a sense of humor to consumers, and to directly communicate to consumers that the coffee we had labeled CHARBUCKS BLEND was very darkly roasted and a dramatic departure from what we have become known for.  Specifically, it is the use of the term "char" that is significant.  Using "char" as a part of the name CHARBUCKS BLEND immediately conjures up the image of charred coffee beans.  Aside from alerting the consumer as to what is in the bag, our assumption was that consumers would credit us with a unique sense of humor to use such a potentially risky name for our product.  The feedback we have received from consumers, to date, has confirmed that our assumptions were correct.

We had to consider the fact that CHARBUCKS rhymes with Starbucks, but we concluded that there could not possibly be any confusion in the minds of consumers because of the radical implications of the term "char" and the resulting implication of charred coffee beans.  Our conclusion was the "char" aspect of the name, with its obvious negative connotations, could not possibly associated with the Starbucks trademark which, from our perspective, was held in such high regard by consumers.  It is indeed rare to see a business market a product with a name that conjures up negative images regarding that product.

We new that CHARBUCKS was not a registered trade name or trademark.

We have absolutely no evidence, whatsoever that any consumer has experienced any confusion resulting from our use of the name CHARBUCKS BLEND.

The logos used by The Black Bear Micro Roastery, and by Starbucks Corporation, are as different as day and night.

To our knowledge, the name CHARBUCKS BLEND only appears on labels bearing our distinct logo.

If you have any evidence that any consumer has been confused by our usage of the name CHARBUCKS BLEND on our product 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.

You need to present us with a much clearer indication of what you mean by trademark dilution.  Even if we named our company Charbucks, I still couldn't understand how that could dilute the Starbucks trademark, because of the radical implications of the term "char".  Naming a computer company "Cranapple", exploiting the name recognition of Ocean Spray's product and Apple Computer, could be somewhat confusing to consumers, and thereby dilute the trademark of Apple Computer.  To our knowledge, we're not confusing, or misleading anybody.

Our intent in using the name CHARBUCKS BLEND for our darkest roasted coffee was in no way intended to be derogatory of Starbucks.  To the contrary, it is quite possibly derogatory to The Black Bear Micro Roastery.  It could be said that we are literally criticizing our own product.  Possibly, we should nominated to receive an award for "honesty in product labeling".

We are currently at a loss as to why Starbucks finds our use of the name CHARBUCKS BLEND disparaging.

There may be a difference between our usage the name CHARBUCKS BLEND and the way in which any preceding usage of the term "charbucks" may have been used.  Certainly our intent was a combination of honesty and humor.

If you have any evidence that the term "charbucks" is used by consumers, and done so with derogatory intent, we would ask you to please present, and document that evidence to us.

You have stated clearly to me, both on the phone on 8/13/97 and on 8/14/97, and in your facsimile transmission to us on 8/15/97, that Starbucks Corporation regards the term "charbucks" as "disparaging".

It appears to us that you are in possession of some  data which affirms to you that there is consumer usage of the term "charbucks" and that this usage would be reasonably regarded as disparaging to Starbucks.

You need to demonstrate, and document to us why the term "charbucks" is disparaging to Starbucks Corporation: If you assert that the term "charbucks" is in widespread usage by consumers, and that said usage is with derogatory intent, you will need to demonstrate that The Black Bear Micro Roastery is somehow responsible for said derogatory intent: You will also need to demonstrate that both the usage by consumers, and the derogatory intent did, in any way, originate with The Black Bear Micro Roastery: You also need to demonstrate, and document why such a negative connotation with the term "charbucks" has come into existence, if in fact it has.

            I would ask you to take into consideration who you have been talking to.  You are coming after a husband and wife who have two teen age daughters.  This is truly a family operation.  Our daughters have put in many long and hard hours here, helping us keep the business going.  We sold most of what we had and mortgaged the house we live in to start this business.  We've been in business for over two years and are still borrowing money to live on.  We work hard seven days a week.  It is a brutal struggle to get a small business going these days.  There is probably no one left in Starbucks Corporation who would have any way to relate to what life is like for us.  But this country has an abundance of people who can instantly relate to our situation.  Starbucks runs the very real and dangerous risk of being perceived by the public as ruthless corporate bully that takes out its indefensible paranoia on small defenseless businesses.  How are we supposed to adequately defend ourselves against a big corporation.  Is Starbucks going to advance us the money so that this matter can be adequately, and fairly heard in US District Court?  Since that is not a great likelihood are only chance would be to make a public appeal for help.  Please be perfectly clear on one point.  If we cannot come to a reasonable resolution of this matter, and you take us to court, we will not back down!  I, my wife Ann, and my two daughters Mandy and Ashley, have sat down and discussed this matter and all of the possible ramifications.  As a family we say to you: we will not back down!

            If the preceding paragraph sounds a bit melodramatic, I'm just trying to get you to get view this matter from the most sensible perspective.  Just how serious an issue is our label in question, and what is a stake for all involved.  I strongly suggest that you enlist the advice of individuals at Starbucks who make business decisions to help you decide what course of action you are going to take.  This might well be more a business decision, rather than simply a legal decision for Starbucks.  What I am saying to you is that we have no desire to gain publicity at the possible expense of Starbucks.  I am trying to talk you out of what could result in media backlash for Starbucks.  Yes it's possible for us to gain enormous name recognition from a media circus resulting from this situation, but I want you to clearly understand that I have never, and, as of now, harbor no ill will towards Starbucks. I have genuine respect for Starbucks and I have no desire to have any responsibility for unnecessary damage to the reputation of Starbucks.

            I also want you to understand that what may seem as simple as waving a wand, to a corporation like Starbucks, can be a substantial hardship for a small, struggling startup business such as ours.  Pulling a product from distribution, or relabeling all existing units is not as simple as you may think.  The disruption to our daily business operations and the expense would be daunting to us.

Not only do we have labeled product distributed throughout Northern New England, but we have an inventory of bags in stock that would have to be destroyed or relabeled, which is extremely labor intensive.

The notion of relabeling bags that have already been filled with product is logistically out of the question.  You would have to apply thousands of labels by hand to appreciate the logistics involved.

All of the computer systems of all of our customers would have to be updated.  This involves forms being produced, notification, and the possible repercussions of putting our customers through this.  And, of course, we have no idea, at this point, of how our customers will respond to having CHARBUCKS BLEND withdrawn.

We would have to edit and reprint all of our forms that have the product listed.  Just reviewing all of our various forms, promotional literature, and most importantly, our computer system, is quite an undertaking.

Finally, we are going to have to incur, at least, some initial legal fees,  There is only so far we can go with out advice from our attorney.

            No, this is not as simple as waving a wand, and it most certainly is not free of cost.  I want you to understand that we have to give the purchase of a $200 piece of equipment or computer software very careful consideration.  More times than not we go without, or delay the purchase of things that are really essential to our business because money is just too tight.  What your talking about is going to run into the thousands of dollars.  First we've had to suffer heavy losses because of the wildly fluctuating green bean prices.  Then, UPS, who our business is 100% dependent on, turns our business upside down.  And now, here comes Starbucks "asking" us to really make things tough on ourselves, "or else".

            I see three possible outcomes.

You can decide to just let the matter drop, and we'll will go about our respective businesses.

You can continue ask us to change the name of CHARBUCKS BLEND, and recall what is currently in distribution, and offer to compensate us for all expenses that will be incurred.  If we are presented with a proper and respectful request / offer from Starbucks, we are willing to make every effort to accommodate.  As I have stated previously, I hold Starbucks in high regard, and if having one of our products labeled CHARBUCKS BLEND creates bad feelings at Starbucks, which you will document, then I would like to make things right.  You must come to terms with the fact that we do not possess a magic wand.

You can continue to insist that we accede to your demands, as currently stated, and we will respectively have to decline to comply with you requests.

            In closing, it should be clear to you at this point that we are not trying to get sued by Starbucks for the purpose of getting publicity.  If we were, we would just ignore your requests in an attempt to induce you to take us to court.  I'd also like to point out that Starbucks has already substantially disrupted our business.  Just the preparation of this response has cut deeply into our business schedule, and our personal schedules (what little we have).  I realize that's it may be difficult for an individual in a corporate setting to comprehend what our lives are like, and I know I can't really make you understand.  I'll just quote my own personal description of life for the small business person: "You don't have to die to go to Hell ... just start a small business."   Having said that, I want you to know that we appreciate your concerns and don't dismiss them lightly.  We hope you appreciate ours.

            This constitutes our response, and we are hopeful a reasonable solution that is mutually respectful of both parties will come of this.

Respectfully yours,

James O. Clark III