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Trademark Dilution: Part II

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* This article is Part II of a two part series.

Prior Use by Plaintiff

Timing is an important factor in the anti-dilution context. This is so because it would be unfair to hold someone liable for the use of a non-infringing, non-diluting mark while another mark gains fame in the marketplace. Hence, a plaintiff in an anti-dilution case must prove that its mark became famous prior to the constructive use date by any potential defendant of the challenged mark. To put it another way, the plaintiff must prove that the defendant first used its mark after the plaintiff’s mark became "famous and distinctive." AM General Corp. v. DaimlerChrysler Corp., 311 F.3d 796 (7th Cir. 2002), related reference, 246 F. Supp. 2d 1030 (N.D. Ind. 2003); Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1013 (9th Cir. 2004), cert. denied, 125 S. Ct. 1825, 161 L. Ed. 2d 723 (U.S. 2005) (the first commercial use of the diluting mark is what "fixes the time by which famousness is to be measured.") As one famous commentator explained, "this requires evidence and proof of the timing of two events: when the plaintiff 's mark achieved that elevated status called "fame" and when the defendant made its first use of its mark." 4 McCarthy on Trademarks and Unfair Competition § 24:96 (4th ed.).

Likely Dilution by Blurring or Tarnishment

The last, and according to some, the most complex element in an anti-dilution case is determining when the associations of two marks have been "blurred," or when a mark’s reputation has been "tarnished." Indeed, the Ninth Circuit has said, in these and other respects, the FTDA poses "formidable problems of interpretation." Tahne Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 905 (9th Cir. 2002).

Dilution by "Blurring"

Blurring occurs when the "unique and distinctive link" between the plaintiff 's mark and its goods or services is muddied and so its value is depressed. Unlike infringement, with dilution the public isn’t confused about the source of a product, but rather two products will spring to mind when one mark is encountered. Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 903 (9th Cir. 2002); Playboy Enterprises, Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002). The theory of dilution by blurring "thus protects the benefits that flow from a sharp and distinct connection between one mark and one product." Horphag Research Ltd. v. Garcia, 475 F.3d 1029, 1037 (9th Cir. 2007) (citations omitted).

The Lanham Act provides that whether two marks have been blurred depends on a balancing of six factors:

1. similarity of the marks
2. the extent to which others use the mark,
3. actual association between the marks
4. predatory intent
5. distinctiveness of the senior mark
6. recognition of the senior mark

15 U.S.C. В§ 1125(c)(2)(B); and, e.g., Mead Data Cent., Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026 (2d Cir. 1989). According to one prominent commentator and several cases, though, the first and fifth factors are the heart of the determination of dilution. See 3 McCarthy В§ 24:94.1; and, e.g., Hershey Foods Corp. v. Mars, Inc., 998 F. Supp. 500, 520 (M.D. Pa. 1998) (stating that "whether the products are similar or not adds nothing to the analysis" because "dilution can apply to competitors")

The first requirement, that there be similarity between the two marks is, in practice, a foundational requirement for dilution. Indeed, mere similarity is not enough to support a dilution claim – the marks must be "identical or close thereto." Thane Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 905 (9th Cir. 2002); and see Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026, 1029 (2d Cir. 1989); Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 227-228, (2d Cir. 1999)("We hold ... that the marks must be вЂ

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<h1>Trademark Dilution: Part II</h1><br />by Olivier A. Taillieu<br />* This article is Part II of a two part series.<br /><br />Prior Use by Plaintiff<br /><br />Timing is an important factor in the anti-dilution context. This is so because it would be unfair to hold someone liable for the use of a non-infringing, non-diluting mark while another mark gains fame in the marketplace. Hence, a plaintiff in an anti-dilution case must prove that its mark became famous prior to the constructive use date by any potential defendant of the challenged mark. To put it another way, the plaintiff must prove that the defendant first used its mark after the plaintiff’s mark became "famous and distinctive." AM General Corp. v. DaimlerChrysler Corp., 311 F.3d 796 (7th Cir. 2002), related reference, 246 F. Supp. 2d 1030 (N.D. Ind. 2003); Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1013 (9th Cir. 2004), cert. denied, 125 S. Ct. 1825, 161 L. Ed. 2d 723 (U.S. 2005) (the first commercial use of the diluting mark is what "fixes the time by which famousness is to be measured.") As one famous commentator explained, "this requires evidence and proof of the timing of two events: when the plaintiff 's mark achieved that elevated status called "fame" and when the defendant made its first use of its mark." 4 McCarthy on Trademarks and Unfair Competition В§ 24:96 (4th ed.).<br /><br />Likely Dilution by Blurring or Tarnishment<br /><br />The last, and according to some, the most complex element in an anti-dilution case is determining when the associations of two marks have been "blurred," or when a mark’s reputation has been "tarnished." Indeed, the Ninth Circuit has said, in these and other respects, the FTDA poses "formidable problems of interpretation." Tahne Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 905 (9th Cir. 2002).<br /><br />Dilution by "Blurring"<br /><br />Blurring occurs when the "unique and distinctive link" between the plaintiff 's mark and its goods or services is muddied and so its value is depressed. Unlike infringement, with dilution the public isn’t confused about the source of a product, but rather two products will spring to mind when one mark is encountered. Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 903 (9th Cir. 2002); Playboy Enterprises, Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002). The theory of dilution by blurring "thus protects the benefits that flow from a sharp and distinct connection between one mark and one product." Horphag Research Ltd. v. Garcia, 475 F.3d 1029, 1037 (9th Cir. 2007) (citations omitted).<br /><br />The Lanham Act provides that whether two marks have been blurred depends on a balancing of six factors:<br /><br />1. similarity of the marks<br />2. the extent to which others use the mark,<br />3. actual association between the marks<br />4. predatory intent<br />5. distinctiveness of the senior mark<br />6. recognition of the senior mark<br /><br />15 U.S.C. В§ 1125(c)(2)(B); and, e.g., Mead Data Cent., Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026 (2d Cir. 1989). According to one prominent commentator and several cases, though, the first and fifth factors are the heart of the determination of dilution. See 3 McCarthy В§ 24:94.1; and, e.g., Hershey Foods Corp. v. Mars, Inc., 998 F. Supp. 500, 520 (M.D. Pa. 1998) (stating that "whether the products are similar or not adds nothing to the analysis" because "dilution can apply to competitors")<br /><br />The first requirement, that there be similarity between the two marks is, in practice, a foundational requirement for dilution. Indeed, mere similarity is not enough to support a dilution claim – the marks must be "identical or close thereto." Thane Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 905 (9th Cir. 2002); and see Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026, 1029 (2d Cir. 1989); Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 227-228, (2d Cir. 1999)("We hold ... that the marks must be вЂ<br /><h2>About the Author</h2><p>Mr. Taillieu is a partner of <a href="http://www.zuberlaw.com/lawfirm/lawyers/attorneys/trademarks/">Zuber &amp; Taillieu LLP</a>. He earned his J.D. with highest honors from George Washington University School of Law, where he graduated #1 in the day class and was Managing Editor of the Law Review.</p> <br /><h3><a href="http://www.content4reprint.com/legal/trademark-dilution-part-ii.htm" title="Trademark Dilution: Part II">Article Source:</a> <a href="http://www.content4reprint.com" title="Free high quality articles">Content for Reprint</a></h3>