© 2011 Cooley LLP, Five Palo Alto Square, 3000 El Camino Real, Palo Alto, CA 94306

Trademark Dilution Before the Trademark Trial and Appeal Board

Aaron M. Fennimore

IPO Annual Meeting

San Antonio

September 10, 2012

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Introduction: A Brief Timeline

1999

Congress enacts the Trademark Amendments Act (TAA)

Amends Sections 13 and 14 of the Lanham Act to make dilution a ground for opposition and cancellation in TTAB proceedings.

Thus,

―Any person who believes that he would be damaged by the registration of a mark upon the principal register, including as a result of dilution under section 43(c), may, upon payment of the prescribed fee, file an opposition….‖*

―A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of dilution under section 43(c), by the registration of a mark on the principal register….‖*

*Excerpts from 15 U.S.C. §§ 1063 and 1064, as they existed prior to passage of the Trademark Dilution Revision Act (TDRA) of 2006

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Introduction: A Brief Timeline (cont.)

2001

Board issues its first decision on dilution. The Toro Company v. ToroHead, Inc., 61 USPQ2d 1164 (TTAB 2001).

Decided several fundamental issues concerning dilution in the context of TTAB proceedings:

Can Section 43(c) be applied in the case of an ITU application? Yes.

When must fame be established in ITU cases? Prior to the filing date.

Examples of evidence to prove a mark is truly famous? ―[R]ecognition by the other party; intense media attention; and surveys.‖ Toro at 1181.

Similarity? Marks must be ―essentially the same.‖ Toro at 1183.

Applicant‘s Mark Opposer‘s Marks

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Introduction: A Brief Timeline (cont.)

2003

The Board sustains a dilution claim for the first time. The NASDAQ

Stock Market, Inc. v. Antartica, S.r.l., 69 USPQ2d 1718 (TTAB 2003).

Despite Moseley, the Board applies likelihood of dilution to ITU apps.

Glimpse of the evidence that the Board is expecting to support fame:

2006

Passage of the TDRA, requiring only a ―likelihood‖ of dilution and

enumerating six non-exhaustive factors for dilution by blurring.

Between 1999 - 2010

The Board sustained only two dilution claims.

Advertising

Website Views

Passers-by

Surveys (80% Awareness)

Unsolicited Media Attention

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Scope of This Discussion

The Board‘s Precedential Opinions Since 2007

1. Fame

What does the Board view as the threshold to establish a truly

famous mark?

What role do surveys play?

2. Statutory Dilution-by-Blurring Factors

Similarity of the Marks

Intent to Cause Association and Actual Association

3. Defenses of Parody and Non-Commercial Use

4. Practice Pointers

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A Cause of Action for Dilution

Requires consideration of three elements in an opposition:

1. Whether the opposer‘s mark is famous;

2. Whether the opposer‘s mark became famous prior to the date of the

application to register the applicant‘s mark [or the date of applicant‘s

first use, if applicable]; and

3. Whether the applicant‘s mark is likely to cause dilution by blurring the

distinctiveness of opposer‘s mark or by tarnishing the reputation of

opposer‘s mark.

Coach Services, Inc. v. Triumph Learning, LLC, 96 USPQ2d 1600, 1610

(TTAB 2010), aff’d in part, vacated in part, 668 F.3d 1356 (Fed. Cir. 2012) and

remanded to the TTAB; Nat’l Pork Board v. Supreme Lobster and Seafood

Co., 96 USPQ2d 1479, 1494-5 (TTAB 2010).

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Fame: The Required Threshold

Famous defined:

―[W]idely 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.‖

Non-exhaustive factors:

The duration, extent, and geographic reach of advertising and publicity

of the mark;

The amount, volume, and geographic extent of sales of goods or

services;

The extent of actual recognition of the mark;

Whether the mark has been registered on the Principal Register or

under the 1881 or 1905 trademark acts.

15 U.S.C. § 1125(c)

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Fame: The Required Threshold (cont.)

According to the TTAB, Fame May Be Achieved When:

The mark has been transformed into

―a symbol of American culture.‖

7-Eleven, Inc. v. Wechsler, 83 USPQf2d 1715 (TTAB 2007).

―one of the most well-known and successful advertising

slogans in modern times.‖

Nat’l Pork Board and Nat’l Pork Producers Council v. Supreme Lobster and

Seafood Co., 96 USPQ2d 1479 (TTAB 2010).

―[a] slogan [that] has made its way into the popular culture

at all levels.‖

Nike, Inc. v. Maher, 100 USPQ2d 1018 (TTAB 2011).

―a household name.‖

Research in Motion Ltd. v. Defining Presence Marketing Group, Inc., 102

USPQ2d 1187 (TTAB 2012); Rolex Watch U.S.A., Inc. v. AFP Imaging Corp.,

101 USPQ2d 1188 (TTAB 2011).

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Fame: The Required Threshold (cont.)

What Amount Evidence Will Get You There?

7-Eleven, Inc. v. Weschler, 83 USPQ2d 1715 (TTAB 2007)

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Fame: The Required Threshold (cont.)

7-Eleven Proffered the Following Evidence to Show Fame:

Sales. Average of $180,000,000 / year since 1985.

Cross-promotion. Marketing with MLB, NASCAR, the local zoo, etc.

Advertising across all media. Millions of dollars spent over 2 ½ decades.

Product placement. Products seen in many movies and television shows.

Media attention. Identifying the mark as a symbol of American culture.

Survey. 73% unaided awareness among the general consumer population.

Famous?

Definitely.

Outcome:

Despite fame, the marks were not ―so substantially similar to support a

dilution claim.‖

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Fame: The Required Threshold (cont.)

Nat’l Pork Board v. Supreme Lobster and Seafood Co.,

96 USPQ2d 1479 (TTAB 2010)

Evidence of fame of THE OTHER WHITE MEAT:

Advertising, cross-promotion, media and publications;

Studies: awareness between 80-85%;

―Extensive references‖ in popular culture.

“[P]art of the fabric of popular culture in the United States.”

Famous?

Definitely.

Outcome:

Sustained.

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COMPARE: Coach Services, Inc. v. Triumph Learning LLC,

96 USPQ2d 1600 (TTAB 2010),

aff’d in part, vacated in part, 668 F.3d 1356 (Fed. Cir. 2012) and remanded to the TTAB

Evidence of fame of COACH:

50 years of use; 400 retail stores in 50 states.

Annual sales of $3.5 Billion

Study: ―high-level of brand awareness.‖

Famous?

No. Wait… really?

Sales figures were limited to 2008 only.

Study not probative.

Outcome:

Dismissed.

Fame: The Required Threshold (cont.)

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To What Extent Are Surveys Required?

But I don‘t have a survey; what can I do?

UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868 (TTAB 2011)

Evidence of Fame of MOTOWN went beyond the usual:

Numerous music industry awards;

MOTOWN-themed store, museum and café;

Extensive use for 50 years;

Defined a new musical style;

Led to Detroit‘s nickname.

Famous?

Definitely.

Outcome:

Sustained.

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To What Extent Are Surveys Required? (cont.)

Examples of Evidence:

Sales

Advertising

Cross-promotion / Product Placements

Unsolicited Media Attention / Publications

Survey

Long Period of Use

Awards and Recognition

Retail Stores, Cafés, etc.

References in Pop Culture

Substantial Web Traffic / Downloads / Online Trending?

(Massive public exposure among the general population.)

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Factors Considered for Proving Dilution

Dilution by blurring – an association arising from:

―Similarity‖ between a mark or trade name and a famous mark that

Impairs the distinctiveness of the famous mark.

Six non-exhaustive factors considered:

The degree of similarity between the mark and the famous mark;

The degree of inherent or acquired distinctiveness of the famous mark;

The extent to which the owner of the famous mark is engaging in

substantially exclusive use of the mark;

The degree of recognition of the famous mark;

Whether the user of the mark or trade name intended to create an

association with the famous mark;

Any actual association between the mark or trade name and the

famous mark.

15 U.S.C. § 1125(c)(2)(B)

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Factors Considered for Proving Dilution (cont.)

Similarity of the Marks

Nike, Inc. v. Maher, 100 USPQ2d 1018 (TTAB 2011)

The Board abandons the rule that the defendant‘s mark must be

―identical or very or substantially similar‖ to plaintiff‘s famous mark.

Reasoning:

―The harm dilution does to the selling power of a mark is not only

caused by … an identical mark. It may be caused by a ‗look-alike‘

mark.‖

The question is whether the mark is sufficiently similar to trigger

consumers to ―conjure up‖ opposer‘s famous mark?

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Factors Considered for Proving Dilution (cont.)

Similarity of the Marks (cont.)

Rolex Watch U.S.A., Inc. v. AFP Imaging Corporation,

101 USPQ2d 1188 (2011)

Is ROLL-X for rolling x-ray tables dilutive of ROLEX for watches?

Here, ―the marks are spelled differently and, because of the spelling of

applicant‘s mark, it engenders a different appearance, meaning and

commercial impression from opposer‘s mark.‖

Actual Association: Rolex‘s survey found that more than 50% of

respondents thought of applicant‘s goods – and not ROLEX – when

it encountered the mark.

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Factors Considered for Proving Dilution (cont.)

Intention to Cause an Association / Actual Association?

Research in Motion Ltd. v. Defining Presence Marketing Group, Inc.,

102 USPQ2d 1187 (TTAB 2012)

CRACKBERRY previously existed as a

known nickname for BLACKBERRY.

―Under the circumstances, it is clear that

applicants were well aware of this pre-

existing association at the time they

adopted [CRACKBERRY].‖

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Dilution by Blurring Factors Summarized

Case Famous? Similar? Inherently

Distinctive?

Substantially

Exclusive

Use?

Degree of

Recognition?

Intent to

Cause

Assoc.?

Actual

Assoc.?

Result?

7-Eleven * —

Citigroup + *

Nat’l Pork

Board

* —

Coach

Services

*

Nike — —

UMG

Rolex

Research

in Motion

* Determined when Board required substantial similarity between the marks.

— This factor was neutral in the analysis.

+ Although the mark was famous for dilution purposes, fame was not established by the relevant date.

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A Note on Defenses

Exclusions: ―Any fair use … of a famous mark … other than as a

designation of source for the person’s own goods or services.‖

Parody:

Does applicant‘s filing of a mark preclude the availability of this defense?

Parody should be assessed ―as part of the circumstances to be

considered for determining whether the opposer has made out a claim

for dilution by blurring.‖ Research in Motion, 102 USPQ2d at 1200.

Non-Commercial Use:

Not available in TTAB proceedings.

―[A] party cannot seek to register or maintain a trademark or

service mark for its own exclusive use in commerce in association

with its identified goods or services and then claim that it is not

using its mark commercially as a defense to a dilution claim.‖

American Express Marketing & Development Corp. v. Gilad Development

Corporation, 94 USPQ2d 1294, 1298 (TTAB 2010).

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A Few Practice Pointers

Proving Fame

Fame survey should demonstrate no less than 70% unaided awareness.

Evidence should be probative of the general population.

No survey? Be prepared to ―wow‖ the Board.

(Substantial?) Similarity Remains Crucial

Be prepared to convincingly argue that the mark you are opposing or

seeking to cancel engenders substantially the same overall commercial

impression.

―Conjuring up‖ the famous mark: be prepared to argue how the

association diminishes the distinctiveness, and indeed the marketing

power, of your mark.

If It‘s Worth Pursuing, It‘s Worth Pursuing Right

Demon Int’l LC v. Lynch, 86 USPQ2d 1058, 1059-60 (TTAB 2008).

Dilution claim insufficiently pleaded because no allegation of fame.

Put in sufficient evidence to meet the threshold for fame (e.g., Coach).

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Trademark Dilution Before the TTAB

THE END