| * This article is Part II of a two part | | | | cause 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 Plaintiff | | | | words, a famous mark is tarnished when it is |
| | | | associated with an offensive or inferior |
| Timing is an important factor in the | | | | good, or is portrayed in a degrading context. |
| anti-dilution context. This is so because it | | | | Playboy Enters. v. Netscape Communs. Corp., |
| would be unfair to hold someone liable for | | | | 354 F.3d 1020, 1033 (9th Cir. 2004). |
| the use of a non-infringing, non-diluting | | | | |
| mark while another mark gains fame in the | | | | A court evaluating a tarnishment claim will |
| marketplace. Hence, a plaintiff in an | | | | ask whether the defendant's use of a similar |
| anti-dilution case must prove that its mark | | | | mark created an association in the minds of |
| became famous prior to the constructive use | | | | consumers that is inconsistent with the |
| date by any potential defendant of the | | | | pre-existing reputation of the plaintiff's |
| challenged mark. To put it another way, the | | | | mark. Starbucks Corp. v. Lundberg, 2005 U.S. |
| plaintiff must prove that the defendant first | | | | Dist. LEXIS 32660 (D. OR. 2005). |
| used its mark after the plaintiff's mark | | | | |
| became "famous and distinctive." AM General | | | | So, for example, the Starbucks mark was |
| Corp. v. DaimlerChrysler Corp., 311 F.3d 796 | | | | deemed 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 Motor | | | | Consumer 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) (the | | | | because there was no evidence that the |
| first commercial use of the diluting mark is | | | | Sambucks store and products had developed the |
| what "fixes the time by which famousness is | | | | same premium reputation that the Starbucks |
| to be measured.") As one famous commentator | | | | brand enjoys. Starbucks, 2005 U.S. Dist. |
| explained, "this requires evidence and proof | | | | LEXIS 32660, *20; and see Playboy, 354 F.3d |
| of the timing of two events: when the | | | | at 1033. |
| plaintiff's mark achieved that elevated | | | | |
| status called "fame" and when the defendant | | | | Likewise, posters that bore the phrase "Enjoy |
| made its first use of its mark." 4 McCarthy | | | | Cocaine" 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 Tarnishment | | | | associated the plaintiff's product with an |
| | | | illegal drug. Coca-Cola Co. v Gemini Rising, |
| The last, and according to some, the most | | | | Inc., 346 F Supp. 1183 (E.D.N.Y. 1972). |
| complex element in an anti-dilution case is | | | | |
| determining when the associations of two | | | | Remedies for Dilution |
| marks have been "blurred," or when a mark's | | | | |
| reputation has been "tarnished." Indeed, the | | | | An injunction is the standard remedy |
| Ninth Circuit has said, in these and other | | | | available to a plaintiff whose mark has been |
| respects, the FTDA poses "formidable problems | | | | diluted. 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 and | | | | and 1118. The factors that weight into the |
| distinctive link" between the plaintiff's | | | | availability of these remedies are discussed |
| mark and its goods or services is muddied and | | | | in [Related Article]. |
| so its value is depressed. Unlike | | | | |
| infringement, with dilution the public isn't | | | | Federal vs. State Law |
| confused about the source of a product, but | | | | |
| rather two products will spring to mind when | | | | The federal dilution statutes were enacted in |
| one mark is encountered. Mattel, Inc. v. MCA | | | | 1996 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 of | | | | dilution was available only under state law. |
| dilution by blurring "thus protects the | | | | 4 McCarthy on Trademarks and Unfair |
| benefits that flow from a sharp and distinct | | | | Competition § 24:83 (4th ed.) |
| connection between one mark and one product." | | | | |
| Horphag Research Ltd. v. Garcia, 475 F.3d | | | | To date, 27 states have enacted anti-dilution |
| 1029, 1037 (9th Cir. 2007) (citations | | | | statutes (Alabama, Arkansas, California, |
| omitted). | | | | Connecticut, Delaware, Florida, Georgia, |
| | | | Idaho, Illinois, Iowa, Louisiana, Maine, |
| The Lanham Act provides that whether two | | | | Massachusetts, Minnesota, Missouri, Montana, |
| marks have been blurred depends on a | | | | Nebraska, New Hampshire, New Mexico, New |
| balancing of six factors: | | | | York, Oregon, Pennsylvania, Rhode Island, |
| | | | South Carolina, Tennessee, Texas, and |
| 1. similarity of the marks | | | | Washington) ("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 marks | | | | 140, §22; N.Y. Gen. Bus. L. § 368-d |
| | | | (McKinney); Tenn.Code Ann. 47-25-513(a). Some |
| 4. predatory intent | | | | of those that have not adopted anti-dilution |
| | | | statutes recognize the doctrine under their |
| 5. distinctiveness of the senior mark | | | | common 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 and | | | | interests at both the state and the federal |
| several cases, though, the first and fifth | | | | levels, the anti-dilution states' statutory |
| factors are the heart of the determination of | | | | elements 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., 998 | | | | Dennison 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 not | | | | requirements under California law are |
| adds nothing to the analysis" because | | | | substantially 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 be | | | | Ann. 47-25-513(a) with AutoZone, Inc. v. |
| similarity between the two marks is, in | | | | Tandy Corp., 373 F.3d 786, 801 (6th Cir. |
| practice, a foundational requirement for | | | | 2004) ("There are no Tennessee cases that |
| dilution. Indeed, mere similarity is not | | | | analyze this statute, and in the past we have |
| enough to support a dilution claim - the | | | | interchangeably 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 Mead | | | | Those 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., 191 | | | | federal court. See, Gulf Coast Bank v. GCB & |
| F.3d 208, 227-228, (2d Cir. 1999)("We hold | | | | Trust Co., 652 So. 2d 1306, 1312 (La. Sup. |
| ... that the marks must be 'very' or | | | | Ct. 1995); Cushman v. Multon Hollow Land Dev. |
| 'substantially' similar and that, absent such | | | | Inc., 782 S.W.2d 150, 162-3 (Mo. Ct. App. |
| similarity, there can be no viable claim of | | | | 1990); Skil Corp. v. Barnet, 337 Mass. 485 |
| dilution.'"). The fifth factor, | | | | (1958); Little India Stores, Inc. v. Singh, |
| distinctiveness of the senior mark, is | | | | 101 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 the | | | | garbage bags, deemed not to lessen the |
| remaining four factors. They are deemed less | | | | Godzilla mark under state law). The concern |
| important to the inquiry and their absence | | | | is that dilution will swallow up all |
| will not preclude a dilution claim. See Mead | | | | competition 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 that | | | | The 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 with | | | | well-known trademarks, and has slowly begun |
| the impact of a mark on dissimilar and | | | | to 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.3d | | | | away 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 the | | | | those marks that are truly famous or |
| reputation and value of the mark may be | | | | well-known. |
| diminished because use of a similar mark may | | | | |