Granite State coffee roaster fends off Starbucks lawsuit

By RILEY YATES AND DALE VINCENT
Union Leader Staff
Wednesday, Dec. 28, 2005

Manchester — Center Tuftonboro coffee roaster Jim Clark stood his ground against coffee giant Starbucks and won.

Starbucks sued Clark’s Black Bear Micro Roastery in U.S. District Court in New York, alleging trademark infringement, unfair competition and dilution of the Starbucks trademark because the New Hampshire man marketed a dark-roasted coffee blend called “Charbucks.”

But a U.S. District Court judge ruled against Starbucks last week, saying the company failed to prove its image was tarnished by the Charbucks brand.

It’s the latest in a legal fight that caused Clark to learn the intricacies of copyright law and his company’s insurance contract, as he’s gone up against a corporate empire with deep pockets.

“I had vicious arguments with my own attorneys right from day one,” Clark said. “When I said I wanted this to go to trial, they laughed in my face.”

U.S. District Court Judge Laura Taylor Swain wrote that in adopting the name, Black Bear intended to take advantage of the similarity to the Starbucks name and the perception the West Coast-based company sells a dark roast of Joe.

But the evidence did not support an inference it was done to mislead consumers about a connection between the two, Swain ruled.

Starbucks also failed to demonstrate that a Charbucks brand is likely to hurt the perception of Starbucks’ goods in the eyes of the public, she said.

Clark said he chose Charbucks to warn customers that a new roast was dark, dark, dark. The company has used the name in incarnations that included “Charbucks Blend,” “Mister Charbucks” and “Mr. Charbucks.”

“I said, ‘I want to name it something that will grab the average customer and stop them dead in their tracks,’” Clark said from his Portsmouth coffee shop, The Den. “We thought the product would be discontinued after a while, simply because of lack of interest.”

Starbucks’ Seattle-based public affairs office did not return a phone call yesterday.

Starbucks has vowed to appeal the judge’s ruling, Clark said, but insurance will not cover his further legal costs. He said he’s hoping to find an attorney who will work pro bono on a case that could reach the Supreme Court.

“Is there any realistic possibility that we will harm them, given our size?” Clark said. “Common sense tells you we are not hurting Starbucks. We can’t, we’re too small.”

First contacted by Starbucks in 1997, he said he twice thought he had reached a settlement, only to have it fall through.

“These people, the corporations, have a lot of money and all they have to do is go to the clerk’s office and pay the fee and haul you into court,” Clark said.

Swain wrote that the packaging of Clark’s product, offered by mail order and in The Den, “is different in imagery, color and format from Starbucks’ logo and signage.” There was no evidence Clark’s company “advertises by radio or uses ‘Charbucks’ as a stand-alone word in promoting or offering its product,” she said.

Starbucks packaging includes a circular logo containing a depiction of a mermaid. Charbucks packaging identifies it as a product of Black Bear Micro Roastery by color, words and a picture of a man walking, Swain said.

She labeled as “a red herring” a Starbucks’ argument that confusion between the two companies was more likely because Black Bear sells its brand on the Internet. The company had cited a telephone survey that found 79 percent of people who were familiar with Starbucks had made a purchase from a Web site.