Trademark infringement is determined based on whether there is a likelihood of confusion as to the source of the goods or services with which the trademark is used in commerce. In each regional federal circuit, the test for likelihood of confusion is similar, namely a non-exclusive list of factors including the similarity of the marks and the similarity of the goods and services being offered.
Likelihood of Confusion Not Required for Dilution
Dilution is a separate trademark theory intended to protect a “famous” mark that does not require finding a likelihood-of-confusion. 15 U.S.C. § 1125(c); see also Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1723-24 (Fed. Cir. 2012).
The concern for dilution is that “the gradual whittling away of distinctiveness will cause the trademark holder to suffer ‘death by a thousand cuts.’” Nat’l Pork Bd. v. Supreme Lobster & Seafood Co., 96 USPQ2d 1479, 1497 (TTAB 2010) (citation omitted); see also Enter. Rent-A-Car Co. v. Advantage Rent-A-Car Inc., 330 F.3d 1333, 66 USPQ2d 1811, 1816 (Fed. Cir. 2003) (“dilution law is intended to protect a mark’s owner from dilution of the mark’s value and uniqueness”).
Sufficiently “Famous” for Dilution
Whether a trademark is sufficiently “famous” for dilution to apply depends on whether it is widely recognized by the general consuming public as a designation of source in view of the following factors set forth in 15 U.S.C. § 1125(c)(2)(A):
- The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties;
- The amount, volume, and geographic extent of sales of goods or services offered under the mark;
- The extent of actual recognition of the mark; and
- Whether the mark was registered.
One court stated that dilution only applies to “those few truly famous marks like Budweiser beer, Camel cigarettes, Barbie Dolls, and the like.” Bd. of Regents v. KST Elec., Ltd., 550 F. Supp. 2d 657, 679 (W.D. Tex. 2008).
Sufficient to “Conjure Up” Dilution
To show dilution by blurring, the following is considered under 15 U.S.C. § 1125(c)(2)(B)(i-vi):
- the degree of similarity between Defendant’s mark and Plaintiff’s famous mark;
- the degree of inherent or acquired distinctiveness of Plaintiff’s mark;
- the extent to which Plaintiff is engaging in substantially exclusive use of its mark;
- the degree of recognition of Plaintiff’s mark;
- whether Defendant intended to create an association with Plaintiff’s mark; and
- any actual association between Defendant’s mark and Plaintiff’s mark.
For dilution, the similarity between the marks need only be sufficient to cause consumers to “conjure up” the famous mark and be immediately associated with that famous mark. Nike, Inc. v. Maher, 100 USPQ2d 1018, 1030 (TTAB 2011).
Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.