Trademark Dilution

Intro to IP - Prof Merges

3.29.2010

Trademark Dilution

• TM Infringement – Recap

• Vuitton v. Haute Diggity Dog, Inc.

• Overview of the statute

Infringement - Example

• Odom’s Tennessee Pride v FF Acquisition Co., No 2009-1473

• Federal Circuit, March 19, 2010

AMF/Sleekcraft Factors

1. the strength of the mark;2. proximity or relatedness of the goods3. similarity of the marks;4. evidence of actual confusion;5. the marketing channels used;6. degree of customer care in purchase;7. defendant's intent in selecting the mark;8. likelihood of expansion into other markets.

Similarity analysis

• “Sight, sound and meaning” test

KING vs. LION KINGFAR SIDE vs. DISTANT SIDECRAZY CAT v. KRAZY KAT

• Role of (1) differentiating factors, and (2) disclaimers

http://www.hautediggitydog.com/

• HAUTE DIGGITY DOG is the brain puppy of Pamela Reeder and together with partner Victoria Dauernheim, Haute Diggity Dog has quickly grown from a fun idea to a successful line of popular parody dog toys, unique collars, carry bags, and must have dog accessories.

• PAMELA REEDER is no stranger to growing a business. She learned the ropes while owning a successful bath and body retail store. She also owned and operated a freelance floral design business. Pamela lives with her two beloved dogs Biscuit and Rusty.

• VICTORIA DAUERNHEIM was one of the pioneers at FedEx and assisted the start-up company through its development years into becoming a billion dollar giant we know today. Victoria has a feisty Pomeranium named Fluffy.

Logorama

Parody

“The name “Chewy Vuiton” is, like “Timmy Holedigger,” an obvious parody of a famous brand name. The fact that the real Vuitton name, marks, and dress are strong and recognizable makes it unlikely that a parody-particularly one involving a pet chew toy and bed-will be confused with the real product.”

TM Infirngement

• Good review of infringement factors

• Marketing channels, price

– Internet marketing -- ?

Dilution/Parody

“[T]he Second Circuit and its district courts have held on numerous occasions that in the case of parody, “the use of famous marks in parodies causes no loss of distinctiveness, since the success of the use depends upon the continued association with the plaintiff.”

“This Court finds that no reasonable trier of fact could conclude that Plaintiff's mark is diluted by blurring in this case, and summary judgment is appropriate. Accordingly, Defendants' motion for summary judgment will be granted for dilution by blurring.”

Tarnishment

“Tarnishment occurs when the plaintiff's trademark is likened to products of low quality, or is portrayed in a negative context. Deere & Co. v. MTD Prods., 41 F.3d 39, 43 (2d Cir.1994). When the association is made through harmless or clean puns and parodies, however, tarnishment is unlikely.”

43(c) Dilution by blurring; dilution by tarnishment

(1) Injunctive relief Subject to the principles of equity, the owner of a famous

mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.

(2) Definitions

(A) For purposes of paragraph (1), a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following:

(i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.

(ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.

(iii) The extent of actual recognition of the mark.(iv) Whether the mark was registered . . .

43(c)(2)(B)

(B) For purposes of paragraph (1), "dilution by blurring" is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:

(i) The degree of similarity between the mark or trade name and the famous mark.

(ii) The degree of inherent or acquired distinctiveness of the famous mark.

(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.

(iv) The degree of recognition of the famous mark.(v) Whether the user of the mark or trade name intended

to create an association with the famous mark.(vi) Any actual association between the mark or trade

name and the famous mark.

Tarnishment

(C) For purposes of paragraph (1), "dilution by tarnishment" is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.

43(c): Limiting Factors

• Injunction only

• Registration of defendant’s mark a complete defense

• Fair use, noncommercial use, news reporting

(4) Burden of proof

In a civil action for trade dress dilution under this chapter for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that- (A) the claimed trade dress, taken as a whole, is not functional and is famous; and(B) if the claimed trade dress includes any mark or marks registered on the principal register, the unregistered matter, taken as a whole, is famous separate and apart from any fame of such registered marks.

5 elements of TM Dilution1. Famous mark

2. Distinctive

3. Jr. user: commercial use, in commerce

4. After Sr. mark has become famous

5. Causes dilution of distinctive quality of Sr mark

Distinctiveness

• “Spectrum” of marks (generic arbitrary/fanciful)

• Separate from “Fame”

Famous marks that are not distinctive

• National, Ace, United, etc.

• Be careful with this –

– [a] Graphic elements can still be distinctive

– McCarthy sees redundancy with fame . . .

Arguments for distinctiveness

• This is the quality the statute is seeking to protect

– “Kodak bicycles” dilutes the uniqueness of the TM “Kodak”

– Shift of emphasis from product (and consumer associations) to mark itself

Product proximity

• Courts say sale of a competing product can dilute distinctiveness of a TM

• Does this undermine the idea of a distinct harm from TM dilution?