Trademark Dilution

1. Trademark Dilution Intro to IP - Prof Merges 3.30.09

2. Trademark Dilution • Nabisco v. PF Brands • Vuitton v. Haute Diggity Dog, Inc. • Overview of the statute

6. CatDog

7. Word Mark GOLDFISHGoods and Services IC 001 005 029 030 031 032. US 046. G & S: Confections and Bakery Products-Namely, Cookies, Salted Biscuits, [Pastries and Cakes] Mark Drawing Code (1) TYPED DRAWING Serial Number 72133881 Filing Date December 12, 1961 Current Filing Basis 44E Original Filing Basis 44E Registration Number 0739118 International Registration Number 0972118 Registration Date October 9, 1962 Owner (REGISTRANT) Kambly AG, Biscuits-, Confiserie- und Nahrmittelfabrik CORPORATION SWITZERLAND  (LAST LISTED OWNER) PEPPERIDGE FARM, INCORPORATED Assignment Recorded ASSIGNMENT RECORDED Attorney of Record A. MINNIE ALEXANDER Type of Mark TRADEMARK Register PRINCIPAL -- Renewal 2ND RENEWAL 20030123 Live/Dead IndicatorLIVE -- http://tess2.uspto.gov/bin/showfield?f=doc&state=4010:qiqp26.2.28

8. Nabisco • Injunction granted by trial court • Also: recall notice • NB: State antidilution protection also

9. 5 elements of TM Dilution • Famous mark • Distinctive • Jr. user: commercial use, in commerce • After Sr. mark has become famous • Causes dilution of distinctive quality of Sr mark

10. Distinctiveness • “Spectrum” of marks (generic  arbitrary/fanciful) • Separate from “Fame”

11. Famous marks that are not distinctive • National, Ace, United, etc. • Be careful with this – • [a] Graphic elements can still be distinctive • McCarthy sees redundancy with fame . . .

12. Arguments for distinctiveness • This is the quality the statute is seeking to protect • “Kodak bicycles” dilutes the uniqueness of the TM “Kodak” • Shift of emphasis from product (and consumer associations) to mark itself -- p. 744

13. Nabisco’s arguments • 3 cracker mix • Different packaging • “Post-sale confusion” – Levi’s jeans case

14. Product proximity • Court says sale of a competing product can dilute distinctiveness of a TM • Does this undermine the idea of a distinct harm from TM dilution?

15. 43(c) Dilution by blurring; dilution by tarnishment • Injunctive relief Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.

16. (2) Definitions (A) For purposes of paragraph (1), a mark is famous if it is widely 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. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following:

17. (i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties. (ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark. (iii) The extent of actual recognition of the mark. (iv) Whether the mark was registered . . .

18. 43(c)(2)(B) (B) For purposes of paragraph (1), "dilution by blurring" is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:

19. (i) The degree of similarity between the mark or trade name and the famous mark. (ii) The degree of inherent or acquired distinctiveness of the famous mark. (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark. (iv) The degree of recognition of the famous mark. (v) Whether the user of the mark or trade name intended to create an association with the famous mark. (vi) Any actual association between the mark or trade name and the famous mark.

20. Tarnishment (C) For purposes of paragraph (1), "dilution by tarnishment" is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.

21. 43(c): Limiting Factors • Injunction only • Registration of defendant’s mark a complete defense • Fair use, noncommercial use, news reporting

22. (4) Burden of proof In a civil action for trade dress dilution under this chapter for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that- (A) the claimed trade dress, taken as a whole, is not functional and is famous; and(B) if the claimed trade dress includes any mark or marks registered on the principal register, the unregistered matter, taken as a whole, is famous separate and apart from any fame of such registered marks.

27. HAUTE DIGGITY DOG is the brain puppy of Pamela Reeder and together with partner Victoria Dauernheim, Haute Diggity Dog has quickly grown from a fun idea to a successful line of popular parody dog toys, unique collars, carry bags, and must have dog accessories. • PAMELA REEDER is no stranger to growing a business. She learned the ropes while owning a successful bath and body retail store. She also owned and operated a freelance floral design business. Pamela lives with her two beloved dogs Biscuit and Rusty. • VICTORIA DAUERNHEIM was one of the pioneers at FedEx and assisted the start-up company through its development years into becoming a billion dollar giant we know today. Victoria has a feisty Pomeranium named Fluffy.

31. Parody – p. 10 “The name “Chewy Vuiton” is, like “Timmy Holedigger,” an obvious parody of a famous brand name. The fact that the real Vuitton name, marks, and dress are strong and recognizable makes it unlikely that a parody-particularly one involving a pet chew toy and bed-will be confused with the real product.”

32. TM Infirngement • Good review of infringement factors • Marketing channels, price • Internet marketing -- ?

33. Dilution/Parody – p. 17 “[T]he Second Circuit and its district courts have held on numerous occasions that in the case of parody, “the use of famous marks in parodies causes no loss of distinctiveness, since the success of the use depends upon the continued association with the plaintiff.”

34. “This Court finds that no reasonable trier of fact could conclude that Plaintiff's mark is diluted by blurring in this case, and summary judgment is appropriate. Accordingly, Defendants' motion for summary judgment will be granted for dilution by blurring.”

35. Tarnishment “Tarnishment occurs when the plaintiff's trademark is likened to products of low quality, or is portrayed in a negative context. Deere & Co. v. MTD Prods., 41 F.3d 39, 43 (2d Cir.1994). When the association is made through harmless or clean puns and parodies, however, tarnishment is unlikely.”