| * This article is Part II of a two part series. | | | | offensive or inferior good, or is portrayed in a |
| Prior Use by Plaintiff | | | | degrading context. Playboy Enters. v. Netscape |
| Timing is an important factor in the anti-dilution | | | | Communs. Corp., 354 F.3d 1020, 1033 (9th Cir. |
| context. This is so because it would be unfair to | | | | 2004). |
| hold someone liable for the use of a non-infringing, | | | | A court evaluating a tarnishment claim will ask |
| non-diluting mark while another mark gains fame | | | | whether the defendant's use of a similar mark |
| in the marketplace. Hence, a plaintiff in an | | | | created an association in the minds of consumers |
| anti-dilution case must prove that its mark | | | | that is inconsistent with the pre-existing reputation |
| became famous prior to the constructive use | | | | of the plaintiff's mark. Starbucks Corp. v. |
| date by any potential defendant of the challenged | | | | Lundberg, 2005 U.S. Dist. LEXIS 32660 (D. OR. |
| mark. To put it another way, the plaintiff must | | | | 2005). |
| prove that the defendant first used its mark | | | | So, for example, the Starbucks mark was |
| after the plaintiff's mark became "famous and | | | | deemed to be diluted and tarnished by another |
| distinctive." AM General Corp. v. DaimlerChrysler | | | | company's use of the identifier "Sambucks." |
| Corp., 311 F.3d 796 (7th Cir. 2002), related | | | | Consumer studies showed that the name |
| reference, 246 F. Supp. 2d 1030 (N.D. Ind. 2003); | | | | "Sambucks" immediately brought "Starbucks" to |
| Nissan Motor Co. v. Nissan Computer Corp., 378 | | | | mind. This association tarnished Starbucks because |
| F.3d 1002, 1013 (9th Cir. 2004), cert. denied, 125 S. | | | | there was no evidence that the Sambucks store |
| Ct. 1825, 161 L. Ed. 2d 723 (U.S. 2005) (the first | | | | and products had developed the same premium |
| commercial use of the diluting mark is what "fixes | | | | reputation that the Starbucks brand enjoys. |
| the time by which famousness is to be | | | | Starbucks, 2005 U.S. Dist. LEXIS 32660, *20; and |
| measured.") As one famous commentator | | | | see Playboy, 354 F.3d at 1033. |
| explained, "this requires evidence and proof of the | | | | Likewise, posters that bore the phrase "Enjoy |
| timing of two events: when the plaintiff's mark | | | | Cocaine" using a font and color scheme identical |
| achieved that elevated status called "fame" and | | | | to those used by the Coca-Cola Company were |
| when the defendant made its first use of its | | | | found to dilute the Coca-Cola trademark, because |
| mark." 4 McCarthy on Trademarks and Unfair | | | | the posters offensively associated the plaintiff's |
| Competition § 24:96 (4th ed.). | | | | product with an illegal drug. Coca-Cola Co. v |
| Likely Dilution by Blurring or Tarnishment | | | | Gemini Rising, Inc., 346 F Supp. 1183 (E.D.N.Y. |
| The last, and according to some, the most | | | | 1972). |
| complex element in an anti-dilution case is | | | | Remedies for Dilution |
| determining when the associations of two marks | | | | An injunction is the standard remedy available to |
| have been "blurred," or when a mark's reputation | | | | a plaintiff whose mark has been diluted. 15 U.S.C. |
| has been "tarnished." Indeed, the Ninth Circuit has | | | | § 1125(c)(1); 16 U.S.C. § 1116. And, if the |
| said, in these and other respects, the FTDA | | | | defendant "willfully intended to harm the |
| poses "formidable problems of interpretation." | | | | reputation of the famous mark," and if the |
| Tahne Int'l, Inc. v. Trek Bicycle Corp., 305 F.3d | | | | allegedly diluting mark was first used after the |
| 894, 905 (9th Cir. 2002). | | | | FTDA was enacted, the plaintiff may also be able |
| Dilution by "Blurring" | | | | to obtain money damages. 15 U.S.C. §§ |
| Blurring occurs when the "unique and distinctive | | | | 1125(c), 1117(a) and 1118. The factors that weight |
| link" between the plaintiff's mark and its goods or | | | | into the availability of these remedies are |
| services is muddied and so its value is depressed. | | | | discussed in [Related Article]. |
| Unlike infringement, with dilution the public isn't | | | | Federal vs. State Law |
| confused about the source of a product, but | | | | The federal dilution statutes were enacted in 1996 |
| rather two products will spring to mind when one | | | | as part of the Lanham Act. This was the first |
| mark is encountered. Mattel, Inc. v. MCA Records, | | | | time federal law recognized the doctrine. Until that |
| Inc., 296 F.3d 894, 903 (9th Cir. 2002); Playboy | | | | time, protection against dilution was available only |
| Enterprises, Inc. v. Welles, 279 F.3d 796 (9th Cir. | | | | under state law. 4 McCarthy on Trademarks and |
| 2002). The theory of dilution by blurring "thus | | | | Unfair Competition § 24:83 (4th ed.) |
| protects the benefits that flow from a sharp and | | | | To date, 27 states have enacted anti-dilution |
| distinct connection between one mark and one | | | | statutes (Alabama, Arkansas, California, |
| product." Horphag Research Ltd. v. Garcia, 475 | | | | Connecticut, Delaware, Florida, Georgia, Idaho, |
| F.3d 1029, 1037 (9th Cir. 2007) (citations omitted). | | | | Illinois, Iowa, Louisiana, Maine, Massachusetts, |
| The Lanham Act provides that whether two | | | | Minnesota, Missouri, Montana, Nebraska, New |
| marks have been blurred depends on a balancing | | | | Hampshire, New Mexico, New York, Oregon, |
| of six factors: | | | | Pennsylvania, Rhode Island, South Carolina, |
| 1. similarity of the marks | | | | Tennessee, Texas, and Washington) ("the |
| 2. the extent to which others use the mark, | | | | anti-dilution states"). "Dilution of a Trademark," 38 |
| 3. actual association between the marks | | | | Am. Jur. Proof of Facts 3d 1 (Supp. 2007); e.g., |
| 4. predatory intent | | | | Cal. Bus. & Prof. Code 14330 (West); Ill. Rev. Stat. |
| 5. distinctiveness of the senior mark | | | | ch. 140, §22; N.Y. Gen. Bus. L. § 368-d |
| 6. recognition of the senior mark | | | | (McKinney); Tenn.Code Ann. 47-25-513(a). Some |
| 15 U.S.C. § 1125(c)(2)(B); and, e.g., Mead Data | | | | of those that have not adopted anti-dilution |
| Cent., Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 | | | | statutes recognize the doctrine under their |
| F.2d 1026 (2d Cir. 1989). According to one | | | | common laws. Others have explicitly rejected the |
| prominent commentator and several cases, | | | | doctrine of dilution altogether. "Dilution of a |
| though, the first and fifth factors are the heart of | | | | Trademark," 38 Am. Jur. Proof of Facts 3d 1 |
| the determination of dilution. See 3 McCarthy | | | | (Supp. 2007). |
| § 24:94.1; and, e.g., Hershey Foods Corp. v. | | | | For the most part, because the law of anti-dilution |
| Mars, Inc., 998 F. Supp. 500, 520 (M.D. Pa. 1998) | | | | seeks to protect the same interests at both the |
| (stating that "whether the products are similar or | | | | state and the federal levels, the anti-dilution states' |
| not adds nothing to the analysis" because "dilution | | | | statutory elements for the cause of action |
| can apply to competitors") | | | | resemble those of the Lanham Act. Compare |
| The first requirement, that there be similarity | | | | Avery Dennison Corp. v. Sumpton, 189 F.3d 868, |
| between the two marks is, in practice, a | | | | 874 (9th Cir. 1999) (noting that the dilution |
| foundational requirement for dilution. Indeed, mere | | | | requirements under California law are substantially |
| similarity is not enough to support a dilution claim - | | | | similar to the federal requirements) with California |
| the marks must be "identical or close thereto." | | | | Bus & Prof. Code 14330 et seq.; and compare |
| Thane Int'l, Inc. v. Trek Bicycle Corp., 305 F.3d | | | | Tenn.Code Ann. 47-25-513(a) with AutoZone, Inc. |
| 894, 905 (9th Cir. 2002); and see Mead Data | | | | v. Tandy Corp., 373 F.3d 786, 801 (6th Cir. 2004) |
| Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., | | | | ("There are no Tennessee cases that analyze this |
| 875 F.2d 1026, 1029 (2d Cir. 1989); Nabisco, Inc. v. | | | | statute, and in the past we have interchangeably |
| PF Brands, Inc., 191 F.3d 208, 227-228, (2d Cir. | | | | analyzed the Tennessee and federal antidilution |
| 1999)("We hold ... that the marks must be 'very' | | | | statutes.") |
| or 'substantially' similar and that, absent such | | | | Those similarities transcend the statutory |
| similarity, there can be no viable claim of dilution.'"). | | | | language. Anti-dilution cases in state court are |
| The fifth factor, distinctiveness of the senior | | | | subject to just as much scrutiny as in federal |
| mark, is redundant of that addressed in the | | | | court. See, Gulf Coast Bank v. GCB & Trust Co., |
| foundational "fame" inquiry. | | | | 652 So. 2d 1306, 1312 (La. Sup. Ct. 1995); |
| Few courts deal at any length with the remaining | | | | Cushman v. Multon Hollow Land Dev. Inc., 782 |
| four factors. They are deemed less important to | | | | S.W.2d 150, 162-3 (Mo. Ct. App. 1990); Skil Corp. v. |
| the inquiry and their absence will not preclude a | | | | Barnet, 337 Mass. 485 (1958); Little India Stores, |
| dilution claim. See Mead Data Cent., Inc. v. Toyota | | | | Inc. v. Singh, 101 A.D. 2d 727 (S.Ct. NY 1984). |
| Motor Sales, U.S.A., Inc., 875 F.2d 1026, 1028 (2d | | | | Toho Co., Ltd. v. Sears, Roebuck & Co., 645 F.2d |
| Cir. 1989) (absence of "bad faith" not fatal). This is | | | | 788 (9th Cir. 1981) ("Bagzilla," for garbage bags, |
| because, the courts say, these factors go more | | | | deemed not to lessen the Godzilla mark under |
| to the fame of the mark, which has already been | | | | state law). The concern is that dilution will swallow |
| decided, or to the similarity of the product or | | | | up all competition in the name of protection |
| likelihood that profits will be diverted to a | | | | against trademark infringement. Coffee Dan's, Inc. |
| competitor, while dilution is expressly concerned | | | | v. Coffee Don's Charcoal Broiler, 305 F. Supp. |
| with the impact of a mark on dissimilar and | | | | 1210, 1217 (N.D. Cal. 1969). |
| non-competing products. E.g., Federal Exp. Corp. v. | | | | CONCLUSION |
| Federal Espresso, Inc., 201 F.3d 168, 175 (2d Cir. | | | | The dilution doctrine provides a separate and |
| 2000) (citations omitted). | | | | distinct cause of action for holders of well-known |
| Dilution by "Tarnishment" | | | | trademarks, and has slowly begun to expand the |
| Tarnishment comes into play when the reputation | | | | protection afforded to their investment from |
| and value of the mark may be diminished | | | | free-riders who might eat away at the goodwill |
| because use of a similar mark may cause the | | | | they've developed. But it is not simply a fall-back |
| public to associate the lack of quality in | | | | for a mark holder unable to prove an infringement |
| defendant's good with the quality of plaintiff's | | | | case. The requirements for establishing dilution are |
| unrelated goods. In other words, a famous mark | | | | strict, and it is available only for those marks that |
| is tarnished when it is associated with an | | | | are truly famous or well-known. |