When Congress enacted the Trademark Dilution Revision Act of 2006 ("TDRA"), the big news was the re-establishment of "likelihood of dilution" as the applicable test for a federal dilution claim. Few, if any, commentators suggested that the TDRA lowered the standard of similarity necessary to prove a dilution claim, and for the first three years of the Act's existence, courts generally treated the standard as if it had not been modified at all.
That changed late last year, however, when the U.S. Court of Appeals for the Second Circuit penned the latest decision in the long-running "coffee war" between Starbucks Corporation and Wolfe's Borough Coffee, Inc. d/b/a Black Bear Micro Roastery ("Black Bear"). In Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009), the Second Circuit rejected the district court's determination - based on pre-TDRA case law - that trademark owners must show "substantial similarity" between the trademarks at issue in order to prevail on a dilution by blurring claim under the TDRA. Citing the language of the TDRA, the appellate court found that the new statute required only "similarity," and that even "minimal similarity" could, in the proper case, suffice to support a claim.
In the March issue of The Intellectual Property Strategist, which is published by Law Journal Newsletters, Hartford IP partner Michael Bucci analyzes the court's lowering of the dilution standard and what it might mean for the future.