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Trademark Dilution: Part II

* This article is Part II of a two partcause the public to associate the lack of
series.quality in defendant's good with the quality
of plaintiff's unrelated goods. In other
Prior  Use  by  Plaintiffwords, a famous mark is tarnished when it is
associated with an offensive or inferior
Timing is an important factor in thegood, or is portrayed in a degrading context.
anti-dilution context. This is so because itPlayboy Enters. v. Netscape Communs. Corp.,
would be unfair to hold someone liable for354  F.3d  1020,  1033  (9th  Cir.  2004).
the use of a non-infringing, non-diluting
mark while another mark gains fame in theA court evaluating a tarnishment claim will
marketplace. Hence, a plaintiff in anask whether the defendant's use of a similar
anti-dilution case must prove that its markmark created an association in the minds of
became famous prior to the constructive useconsumers that is inconsistent with the
date by any potential defendant of thepre-existing reputation of the plaintiff's
challenged mark. To put it another way, themark. Starbucks Corp. v. Lundberg, 2005 U.S.
plaintiff must prove that the defendant firstDist.  LEXIS  32660  (D.  OR.  2005).
used its mark after the plaintiff's mark
became "famous and distinctive." AM GeneralSo, for example, the Starbucks mark was
Corp. v. DaimlerChrysler Corp., 311 F.3d 796deemed to be diluted and tarnished by another
(7th Cir. 2002), related reference, 246 F.company's use of the identifier "Sambucks."
Supp. 2d 1030 (N.D. Ind. 2003); Nissan MotorConsumer studies showed that the name
Co. v. Nissan Computer Corp., 378 F.3d 1002,"Sambucks" immediately brought "Starbucks" to
1013 (9th Cir. 2004), cert. denied, 125 S.mind. This association tarnished Starbucks
Ct. 1825, 161 L. Ed. 2d 723 (U.S. 2005) (thebecause there was no evidence that the
first commercial use of the diluting mark isSambucks store and products had developed the
what "fixes the time by which famousness issame premium reputation that the Starbucks
to be measured.") As one famous commentatorbrand enjoys. Starbucks, 2005 U.S. Dist.
explained, "this requires evidence and proofLEXIS 32660, *20; and see Playboy, 354 F.3d
of the timing of two events: when theat  1033.
plaintiff's mark achieved that elevated
status called "fame" and when the defendantLikewise, posters that bore the phrase "Enjoy
made its first use of its mark." 4 McCarthyCocaine" using a font and color scheme
on Trademarks and Unfair Competition §identical to those used by the Coca-Cola
24:96  (4th  ed.).Company were found to dilute the Coca-Cola
trademark, because the posters offensively
Likely  Dilution  by  Blurring or Tarnishmentassociated the plaintiff's product with an
illegal drug. Coca-Cola Co. v Gemini Rising,
The last, and according to some, the mostInc.,  346  F  Supp.  1183  (E.D.N.Y.  1972).
complex element in an anti-dilution case is
determining when the associations of twoRemedies  for  Dilution
marks have been "blurred," or when a mark's
reputation has been "tarnished." Indeed, theAn injunction is the standard remedy
Ninth Circuit has said, in these and otheravailable to a plaintiff whose mark has been
respects, the FTDA poses "formidable problemsdiluted. 15 U.S.C. § 1125(c)(1); 16 U.S.C.
of interpretation." Tahne Int'l, Inc. v. Trek§ 1116. And, if the defendant "willfully
Bicycle Corp., 305 F.3d 894, 905 (9th Cir.intended to harm the reputation of the famous
2002).mark," and if the allegedly diluting mark was
first used after the FTDA was enacted, the
Dilution  by  "Blurring"plaintiff may also be able to obtain money
damages. 15 U.S.C. §§ 1125(c), 1117(a)
Blurring occurs when the "unique andand 1118. The factors that weight into the
distinctive link" between the plaintiff'savailability of these remedies are discussed
mark and its goods or services is muddied andin  [Related  Article].
so its value is depressed. Unlike
infringement, with dilution the public isn'tFederal  vs.  State  Law
confused about the source of a product, but
rather two products will spring to mind whenThe federal dilution statutes were enacted in
one mark is encountered. Mattel, Inc. v. MCA1996 as part of the Lanham Act. This was the
Records, Inc., 296 F.3d 894, 903 (9th Cir.first time federal law recognized the
2002); Playboy Enterprises, Inc. v. Welles,doctrine. Until that time, protection against
279 F.3d 796 (9th Cir. 2002). The theory ofdilution was available only under state law.
dilution by blurring "thus protects the4 McCarthy on Trademarks and Unfair
benefits that flow from a sharp and distinctCompetition  Â§  24:83  (4th  ed.)
connection between one mark and one product."
Horphag Research Ltd. v. Garcia, 475 F.3dTo date, 27 states have enacted anti-dilution
1029, 1037 (9th Cir. 2007) (citationsstatutes (Alabama, Arkansas, California,
omitted).Connecticut, Delaware, Florida, Georgia,
Idaho, Illinois, Iowa, Louisiana, Maine,
The Lanham Act provides that whether twoMassachusetts, Minnesota, Missouri, Montana,
marks have been blurred depends on aNebraska, New Hampshire, New Mexico, New
balancing  of  six  factors:York, Oregon, Pennsylvania, Rhode Island,
South Carolina, Tennessee, Texas, and
1.  similarity  of  the  marksWashington) ("the anti-dilution states").
"Dilution of a Trademark," 38 Am. Jur. Proof
2.  the  extent to which others use the mark,of Facts 3d 1 (Supp. 2007); e.g., Cal. Bus. &
Prof. Code 14330 (West); Ill. Rev. Stat. ch.
3.  actual  association  between  the  marks140, §22; N.Y. Gen. Bus. L. § 368-d
(McKinney); Tenn.Code Ann. 47-25-513(a). Some
4.  predatory  intentof those that have not adopted anti-dilution
statutes recognize the doctrine under their
5.  distinctiveness  of  the  senior  markcommon laws. Others have explicitly rejected
the doctrine of dilution altogether.
6.  recognition  of  the  senior  mark"Dilution of a Trademark," 38 Am. Jur. Proof
of  Facts  3d  1  (Supp.  2007).
15 U.S.C. § 1125(c)(2)(B); and, e.g., Mead
Data Cent., Inc. v. Toyota Motor Sales,For the most part, because the law of
U.S.A., Inc., 875 F.2d 1026 (2d Cir. 1989).anti-dilution seeks to protect the same
According to one prominent commentator andinterests at both the state and the federal
several cases, though, the first and fifthlevels, the anti-dilution states' statutory
factors are the heart of the determination ofelements for the cause of action resemble
dilution. See 3 McCarthy § 24:94.1; and,those of the Lanham Act. Compare Avery
e.g., Hershey Foods Corp. v. Mars, Inc., 998Dennison Corp. v. Sumpton, 189 F.3d 868, 874
F. Supp. 500, 520 (M.D. Pa. 1998) (stating(9th Cir. 1999) (noting that the dilution
that "whether the products are similar or notrequirements under California law are
adds nothing to the analysis" becausesubstantially similar to the federal
"dilution  can  apply  to  competitors")requirements) with California Bus & Prof.
Code 14330 et seq.; and compare Tenn.Code
The first requirement, that there beAnn. 47-25-513(a) with AutoZone, Inc. v.
similarity between the two marks is, inTandy Corp., 373 F.3d 786, 801 (6th Cir.
practice, a foundational requirement for2004) ("There are no Tennessee cases that
dilution. Indeed, mere similarity is notanalyze this statute, and in the past we have
enough to support a dilution claim - theinterchangeably analyzed the Tennessee and
marks must be "identical or close thereto."federal  antidilution  statutes.")
Thane Int'l, Inc. v. Trek Bicycle Corp., 305
F.3d 894, 905 (9th Cir. 2002); and see MeadThose similarities transcend the statutory
Data Central, Inc. v. Toyota Motor Sales,language. Anti-dilution cases in state court
U.S.A., Inc., 875 F.2d 1026, 1029 (2d Cir.are subject to just as much scrutiny as in
1989); Nabisco, Inc. v. PF Brands, Inc., 191federal court. See, Gulf Coast Bank v. GCB &
F.3d 208, 227-228, (2d Cir. 1999)("We holdTrust Co., 652 So. 2d 1306, 1312 (La. Sup.
... that the marks must be 'very' orCt. 1995); Cushman v. Multon Hollow Land Dev.
'substantially' similar and that, absent suchInc., 782 S.W.2d 150, 162-3 (Mo. Ct. App.
similarity, there can be no viable claim of1990); Skil Corp. v. Barnet, 337 Mass. 485
dilution.'"). The fifth factor,(1958); Little India Stores, Inc. v. Singh,
distinctiveness of the senior mark, is101  A.D.  2d  727  (S.Ct.  NY  1984).
redundant of that addressed in the
foundational  "fame"  inquiry.Toho Co., Ltd. v. Sears, Roebuck & Co., 645
F.2d 788 (9th Cir. 1981) ("Bagzilla," for
Few courts deal at any length with thegarbage bags, deemed not to lessen the
remaining four factors. They are deemed lessGodzilla mark under state law). The concern
important to the inquiry and their absenceis that dilution will swallow up all
will not preclude a dilution claim. See Meadcompetition in the name of protection against
Data Cent., Inc. v. Toyota Motor Sales,trademark infringement. Coffee Dan's, Inc. v.
U.S.A., Inc., 875 F.2d 1026, 1028 (2d Cir.Coffee Don's Charcoal Broiler, 305 F. Supp.
1989) (absence of "bad faith" not fatal).1210,  1217  (N.D.  Cal.  1969).
This is because, the courts say, these
factors go more to the fame of the mark,CONCLUSION
which has already been decided, or to the
similarity of the product or likelihood thatThe dilution doctrine provides a separate and
profits will be diverted to a competitor,distinct cause of action for holders of
while dilution is expressly concerned withwell-known trademarks, and has slowly begun
the impact of a mark on dissimilar andto expand the protection afforded to their
non-competing products. E.g., Federal Exp.investment from free-riders who might eat
Corp. v. Federal Espresso, Inc., 201 F.3daway at the goodwill they've developed. But
168,  175 (2d Cir. 2000) (citations omitted).it is not simply a fall-back for a mark
holder unable to prove an infringement case.
Dilution  by  "Tarnishment"The requirements for establishing dilution
are strict, and it is available only for
Tarnishment comes into play when thethose marks that are truly famous or
reputation and value of the mark may bewell-known.
diminished because use of a similar mark may



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