In choosing a mark or its form of display, do not mimic a distinctive famous mark. If your mark is likely to dilute the famous mark's distinctiveness by blurring or tarnishment, you may be prevented from registering, or even using, your similar mark regardless of the purpose of your mark, the goods or services for which it is to be used, or a lack of likely confusion.
A clear example of trademark dilution involved an intent to use application filed by
In sustaining the opposition and refusing registration, the Trademark Trial and Appeal Board (TTAB) only considered the dilution claim and never addressed Coca-Cola's likelihood of confusion claim. This was the reverse of the TTAB's usual approach, and it probably resulted from the strength of the dilution claim.
The Law
A famous mark must be widely recognized by the general consuming public as the plaintiff's source designation. The TTAB determines this by considering four non-exhaustive factors:
- The duration, extent, and geographic reach of the owner's advertising or publicity;
- The amount, volume, and geographic extent of sales under the mark;
- The extent of actual recognition; and
-
Whether the mark was registered on the
Principal Register .
Dilution is an association between a mark or trade name and a famous mark and whether or not there is a likelihood of confusion, competition, or actual economic injury. The TTAB considers the following elements:
- The plaintiff owns a famous mark that is distinctive;
- The defendant's mark allegedly dilutes the famous mark;
- The plaintiff's mark was famous before defendant's use began and remains famous up to the time of trial; and
- The defendant's mark is likely to cause dilution by blurring (or tarnishment).
Whether dilution by blurring is likely involves six non-exhaustive factors:
- The degree of similarity between the marks;
- The degree of distinctiveness of the famous mark;
- The extent to which the famous mark is in substantially exclusive use;
- The degree of recognition of the famous mark;
- Whether the defendant intended to create an association with the famous mark; and
- Any actual association between the marks.
The Case
Fame.
The record contained examples of advertising consistently showing the Coca-Cola Script Mark for over 130 years. Coca-Cola also reported its advertising and promotional expenditures, which the TTAB characterized as "staggering," and its revenue from net sales, which the TTAB characterized as "enormous." The most significant of the four elements, the extent of recognition, was proven by unsolicited media articles as well as earlier court and the TTAB cases. Of course, the Coca-Cola Script Mark had been registered since 1893.
Likelihood of Dilution.
Similarity. The TTAB characterized the visual similarity between the
Distinctiveness, Exclusivityand Recognition. The record contained no evidence of any third party use of a mark similar to the Coca-Cola Script Mark, which the court found had become extremely famous long ago.
Intent. Although counsel argued that
Dilution by Blurring.
Thus, the TTAB found that
Author's Note: We previously wrote about a similar decision in which the TTAB sustained an opposition by
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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