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The Underbelly of Design: Brand Dilution from Sourced Products
2008-09-08 16:40:00 A couple of months ago we had an open call for guest bloggers, we had a few responses with some great ideas. This week's Design Article, written by MB, was one of them. MB has written a very powerful article on a side of design and product development that the majority of the Brands practices but few actually talk about. I myself have had similar experiences and can vouch for much of his. I am surprised that such product development strategies are not covered in many design education programs. So sit tight and welcome to The Underbelly of Design. ---------- I am a designer in a corporate consumer product company. A lot of my observations and commentary will be more on corporate design and product development. The business I work for has sadly become a commodity lately, driven by retailers forcing our company and our competitors into a price point erosion game. You would know these retailers I'm speaking of though they will remain anonymous. At this point of my co...
By: Design Sojourn
?Terminator Salvation?: The Dilution of a Franchise
2008-05-06 14:02:00 Hopeful about Terminator 4? Well get ready to receive a gigantic middle finger because this franchise just took the dreaded PG-13 turn.
By: Geeks of Doom
Infringement Safari: Seattle
2008-03-16 17:47:00 Apple’s iPod ad campaign has been copied and spoofed dozens of times. Nonetheless, Apple can’t be too happy about San Francisco-based Specialty’s Cafe and Bakery’s latest ads. I saw this placard yesterday in downtown Seattle. The worst of it is, these shops are quite good and well-known. Apple’s campaign is no longer fresh, and the link between ordering sandwiches and the Internet seems pretty weak. So why did Specialty’s copy Apple’s ads? It should be beneath them.
Trademark Dilution Weekend (Part 2)
2008-02-24 19:18:00 On Feb. 21, the Ninth Circuit took the unusual step of amending its six-month old decision in Jada Toys, Inc. v. Mattel, Inc., deciding the “new” standards established in the October 2006 Trademark Dilution Revision Act apply to Mattel’s dilution counterclaim, not the old standards set forth in the Federal Trademark Dilution Act. In doing so, the court applied the TDRA’s “likelihood of dilution” standard, four-factor test for assessing fame, and six-factor test for determining the existence of “dilution by blurring.” After applying these standards, the court found the result was the same as under the old standards: a reasonable trier of fact could conclude that Jada Toys’ HOT RIGZ mark, used in connection with toy trucks, was likely to dilute Mattel’s famous HOT WHEELS mark used in connection with toy vehicles.The court’s Aug. 2, 2007, decision applied the old “actual dilution&...
Trademark Dilution Weekend (Part 1)
2008-02-23 21:14:00 There’s a whole lotta dilution goin’ on. That’s why this weekend is Trademark Dilution Weekend. Today: XEROX and GOOGLE. Tomorrow: the Ninth Circuit’s amended decision applying the “new” Trademark Dilution Revision Act standards in Jada Toys v. Mattel, Inc.The Afro-IP blog, all the way from South Africa and the United Kingdom, apparently follows U.S. politics pretty closely, because yesterday it latched onto a phrase Hilary Clinton used in her Feb. 21 debate with Barack Obama. She reportedly called him the candidate of “change you can Xerox.” Ms. Clinton’s line reportedly drew boos from the audience, but probably not because of its implications on Xerox’s well-known brand.Afro-IP points out that Ms. Clinton’s statement — now- re-published in headlines around the world — is something of a setback for Xerox Corp., which has campaigned against the public’...
Circuits Split Over Which Trademark Dilution Standard Applies
2008-02-14 06:53:00 Let me finish a post I’ve been wanting to write for a few days now. With the Northern District of California’s understandable decision this week in Phase Forward Inc. v. Adams (STL post here) to follow its appellate court’s lead in Jada Toys, Inc. v. Mattel, Inc. (STL post here), I can’t help but face the fact that we have another split in the circuits over trademark dilution — the very thing the Trademark Dilution Revision Act was supposed to avoid. On the one hand, we have courts in the Second and Fourth Circuits applying a schizophrenic test to determine whether the old standards under the Federal Trademark Dilution Act, or the new standards under the Trademark Dilution Revision Act, apply to cases that were pending on October 6, 2006, the date the TDRA was enacted. (See posts here and here.) This matters a lot because the old standards allowed for niche-market fame but required actual dilution, ...
Court Grants Reconsideration of Dilution Dismissal Based on Jada Toys v. Ma
2008-02-12 06:05:00 In Phase Forward Inc. v. Adams, plaintiff brought suit in 2005 against defendant Mary Noel Adams stemming from defendant’s use of the trademark PHASE FORWARD.After the Trademark Dilution Revision Act was enacted in October 2006, defendant moved for summary judgment on the ground that plaintiff’s mark did not meet the amended definition of a “famous mark” as one “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 filing its dilution claim, plaintiff had relied on the Ninth Circuit’s previous recognition of niche-market fame as a valid form of dilution.At that time of defedant’s motion, the Ninth Circuit had not addressed the issue of whether the TDRA would be applied retroactively, though the Second Circuit in Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 477 F.3d 765, 766 (2d Cir. 2007) (STL post here), had applied ...
Law remains fuzzy on dilution of shares
2007-12-13 06:50:00 A shareholder?s right to not have the value of shares diluted is commonly respected in many countries. In Vietnam, however, the concept of "anti-dilution" is still new both to investors and in the law. An anti-dilution provision in a share purchase... [[ This is a content summary only. Visit my website for full links, other content, and more! ]]
Aromatherapy - Essential Oil Dilution Making Essential Oil Suitable For
2007-12-11 07:00:00 Tip! As you can see, lime pure essential oil is an excellent antiseptic oil. It has been used for many conditions, from breathing, to acne, and just for self-care and well-being. Essential oils have gained popularity due to the benefits ...
HBO Decides Not to Fight Application to Register HEALTH AND THE CITY
2007-11-30 02:53:00 The Wall Street Journal’s Law Blog reports on New Yorker Jennifer Cassetta’s fight with Home Box Office, Inc., over her 2006 application to register HEALTH AND THE CITY in connection with “physical fitness instruction.” (Law Blog’s first post on the story here.) HBO, owner of its “Sex and the City” television program and SEX AND THE CITY family of marks, had extended the time to oppose Ms. Cassetta’s applicati-on since June. However, its last extension lapsed on Nov. 18, clearing the way for Ms. Cassetta to get her registration. Most of the reader comments applauded Ms. Cassetta’s triumph over the “suits” at HBO and its parent, Time Warner Inc. However, two thought Ms. Cassetta had brought the trouble on herself by selecting a trademark that trades off HBO’s. I’ve got to side with the latter view. Out of the infinite universe of possible trade...
TTAB Dismisses Hormel's Petition to Cancel SPAM ARREST Registration
2007-11-27 03:56:00 On Nov. 21, the Trademark Trial and Appeal Board dismissed Hormel Foods Corp.’s petition to cancel the trademark registr-ation owned by Seattle-based Spam Arrest, LLC, for SPAM ARREST, with the word “spam” disclaimed, for “computer software, namely software designed to eliminate unsolicited commercial electronic mail.” Hormel had argued Spam Arrest’s mark was not entitled to registration based on a likelihood of confusion with and dilution of Hormel’s family of famous SPAM trademarks. Spam Arrest responded that “spam” is a generic term, which in connection with the word “arrest” is not likely to cause confusion or dilute Hormel’s marks. (For more background, see STL’s report on the Feb. 23 hearing, which I was fortunate enough to attend.) TTAB Judges David Sams, Ellen Seeherman, and Gerard- Rogers unanimously sided with Spam Arrest: “The word ‘s...
Ninth Circuit Allows PERFUME BAY But Not PERFUMEBAY
2007-11-13 05:36:00 The Vegas Trademark Attorney has a nice write-up on the Ninth Circuit’s Nov. 5 decision in Perfumebay.com Inc. v. eBay Inc. Here’s the rub:“The district court did not clearly err in finding that conjoined forms of ‘perfumebay’ created a likelihood of consumer confusion. The district court, therefore, properly enjoined Perfumebay from utilizing such infringing marks. The district court also did not clearly err in finding that the non-conjoined forms of Perfumebay’s mark, such as Perfume Bay, did not create a likelihood of confusion.“However, the district court erred in holding that Perfumebay’s marks did not produce a likelihood of dilution, as the marks are nearly identical to eBay’s mark. The district court also erred in finding that eBay acted with unclean hands in its advertising, as the record did not affirmatively demonstrate the requisite intent to deceive.”The case cite is Perfumebay.com Inc. v. eBay I...
Dilution and Reproduction
2007-11-10 22:53:00 "Dilution drives culture." by Ted ByrneThe semantic implication of breeding being a "dilution" of some sort is not limited to the Russian language. "Reproduction" in English is also carries some of the same connotations. Of course it means the sexual act of conceiving and bearing offspring, but when used as a noun it can also mean a knock-off: "a copy--not an original," "a reasonable facsimile in appearance and construction," "made to appear as an older form," or "made to look like an original."Some definitions lean away from the pejorative sense of the word, emphasizing "with no intention to deceive" or "especially when it is significantly faithful in its resemblance to the form and elements of the original," but we all know that reproduction means you can't have or can't afford the genuine article.I'm sure the breed-dogs-for-working-ability--only people would make the argument that if you only know the reproduction, you'll never appreciate the true beauty of the original (worki...
By: Border Wars
EBay Wins ?Trademark Dilution? Suit
2007-11-07 07:15:00 SAN JOSE, Calif. (AP) — A company whose name sounds like eBay Inc.’s has lost its appeal of a court ruling that protected the online auctioneer from “trademark dilution” by e-commerce rivals with similar-sounding names. Share This
By: Latest News
Jury Finds Competitor Infringed and Diluted Wham-O's YELLOW Trademark
2007-10-16 04:28:00 After seven days of trial, a Central District of California jury found on Oct. 11 that plaintiff/counterclaim defendant SLB Toys USA, Inc., had diluted defendant/ counterclaim plaintiff Wham-O, Inc.’s YELLOW color mark for “sliding surface of water slide toys.” The jury also found that SLB Toys had willfully infringed Wham-O’s YELLOW color mark, whether it was registered or unregistered, and engaged in false advertising. The jury awarded Wham-O $3.6 million and recommended that Judge Ronald Lew enhance their award by an additional $2.4 million. The jury found for SLB Toys on Wham-O’s claim that SLB Toys had infringed a separate “yellow/blue water slide” trademark. (See Vegas Trademark Attorney’s discussion of the decision here.)With regard to dilution, a subject in which I am particularly interested, the jury found as follows:CLAIM 4 — DILUTIONOn the claim of Wham-O against SLB for dilution...
How Courts Have Interpreted the Trademark Dilution Revision Act
2007-10-15 06:47:00 Courts have had a year to interpret the Trademark Dilution Revision Act. What have they decided? Here’s a survey of the decisions I have found most instructive.What is the significance of the Trademark Dilution Revision Act?In Dan-Foam A/S v. Brand Named Beds, LLC, 500 F.Supp.2d 296, 306 n.87 (S.D.N.Y 2007) (STL discussion here), the Southern District of New York summarized the TDRA’s significance as follows:“The TDRA became effective on October 6, 2006, replacing the Federal Trademark Dilution Act of 1996 (‘FTDA’). Specific changes to the federal dilution law under the TDRA include the establishment of a ‘likelihood of dilution’ standard for dilution claims, rather than an ‘actual dilution’ standard; a provision that non-inherently distinctive marks may qualify for protection; a reconfiguration of the factors used to determine whether a mark is famous for dilution purposes, including a rejection of dilution c...
Trademark Dilution Revision Act Now One Year Old
2007-10-08 06:06:00 It’s been a full year of “likelihood of dilution.” On Oct. 6, 2006, President Bush signed the Trademark Dilution Revision Act, which changed how practitioners, academics, trademark owners, and the courts view famous marks. This week, I’ll recap some of the more important decisions under the new statute. In the meantime, check out 43(B)logger Rebecca Tushnet’s dispatches- (here, here, here, and here) from Santa Clara University’s timely conference on “Trademark Dilution: Theoretical and Empirical Inquiries.” There’s tons of great stuff in her detailed record of the event.
NIKEPAL Dilutes NIKE
2007-09-20 06:06:00 On Sept. 10, the Eastern District of California found that Nikepal International, Inc.’s use of NIKEPAL in connection with laboratory goods and services dilutes by blurring Nike, Inc.’s NIKE trademarks under the Trademark Dilution Revision Act’s likelihood of dilution standard. For this reason, the court also reversed the Trademark Trial and Appeal Board’s dismissal of Nike’s opposition to Nikepal’s registration of NIKEPAL. On Sept. 18, the court amended its findings of fact and conclusions of law, which are available here. (STL previously discussed the court’s order on summary judgment here.)Nike has used NIKE in connection with athletic shoes, apparel, and sports equipment since the 1970s. It owns ten federal registrations for the NIKE word mark alone, and 19 others involving the word NIKE. It is the largest athletic seller of athletic footwear and apparel in the world.Nikepal has used NIKEPAL in connection with glass syringes an...
Guide to dilution of essential oils
2007-09-12 07:18:00 You will find many variations and differing opinions on this depending on the preference of individual therapists and their recipes will differ accordingly.
Applying TDRA Standard, Court Upholds Jury's Finding of Dilution
2007-08-28 06:19:00 On August 20, the Central District of California upheld a jury’s finding that a plaintiff had proven its dilution claim by showing a mere likelihood of dilution. It may have been the first jury trial to consider a dilution claim under the lower standard of proof established by the Trademark Dilution Revision Act, which replaced the “actual dilution” standard required by the predecessor statute, the Federal Trademark Dilution Act.In the case, plaintiff Eldorado Stone, LLC, and defendants Renaissance Stone, Inc., Alfonso Alvarez, and Rob Hager sold competing architectural veneer stone products. Plaintiff sold its products under the trademarks RUSTIC LEDGE and CLIFFSTONE, which it alleged were famous and diluted by defendants’ products sold under the trademarks CLIFFLEDGE and RUSTIC STONE.In March, the jury found for the plaintiff. Defendants moved for judgment as a matter of law on the ground that plaintiff had not presented any evidence of ...
Ninth Circuit Finds HOT RIGZ May Dilute HOT WHEELS Under Actual Dilution Te
2007-08-07 05:56:00 On Aug. 2, the Ninth Circuit handed down a new dilution decision, albeit under the old standard. In Jada Toys, Inc. v. Mattel, Inc., Jada sued Mattel for trademark infringement, false designation of origin, and unfair competition on the theory that Mattel’s OLD SCHOOL and NEW SCHOOL lines of miniature vehicles infringed Jada’s registered trademark OLD SKOOL for toy trucks. Mattel counterclaimed on several grounds, including that Jada’s HOT RIGZ mark infringed and diluted Mattel’s HOT WHEELS mark. The Central District of California granted summary judgment for Mattel on Jada’s OLD SCHOOL and NEW SCHOOL claims, and granted summary judgment for Jada on Mattel’s counterclaims. Mattel appealed the dismissal of its counterclaims. The court’s treatment of Mattel’s dilution claim is discussed below.As a threshold matter, the Ninth Circuit applied the “actual dilution” standard set forth in the Federal Trademark Dilution Act rather ...
Georgia Court Finds Disguised Bottle Safes Violate PepsiCo's Trademarks
2007-08-02 06:58:00 Burglars take note: in the future, those bottles marked “PEPSI” in the fridge of the house you’re robbing probably contain nothing more than a carbonated drink. No secret stash there.That’s because on July 20, the Northern District of Georgia found that defendant Sahni Enterprises, Inc., and its affiliates, makers of bottle and can safes, infringed and diluted plaintiff PepsiCo, Inc.’s PEPSI, DIET PEPSI, MOUNTAIN DEW, SIERRA MIST and AQUAFINA trademarks. The court made the same finding with respect to defendants’ food canister safes bearing plaintiff’s CHEETOS, DORITOS and FRITOS marks. After the parties stipulated to a preliminary injunction, the court permanently enjoined defendants from manufacturing and selling safes bearing PepsiCo’s marks.The court explained: “The Infringing Safes marketed by Sahni are manufactured by converting genuine PepsiCo bottles, cans and ca...
"Niche Market" Fame Lives on in Kansas Dilution Case
2007-07-25 08:00:00 More than nine months after the Trademark Dilution Revision Act (TDRA) became law, “niche market” fame under the Federal Trademark Dilution Act (FTDA) lives on — at least in one court. In Hodgdon Powder Co., Inc. v. Alliant TechSystems, Inc., the plaintiff sought damages and injunctive relief stemming from the defendant’s use of CLAY DOT for gunpowder, which plaintiff alleged diluted the fame of its CLAYS mark for gunpowder. Both sides moved for summary judgment. On July 20, the District of Kansas sided with the defendant on plaintiff’s dilution claim. All of this is unremarkable except for the court’s analysis of the dilution claim under the Federal Trademark Dilution Act — the statute the Trademark Dilution Revision Act replaced last October. In a footnote, the court stated: “The parties agree that the Trademark Dilution Revision Act does not apply to plaintiff’s ...
Seattle Band Name Dispute: The Wailers (Washington) vs. The Wailers (Jamaic
2007-06-27 06:07:00 We have a juicy-sounding band- name dispute right here in Seattle: members of the historic Washington band called “The Wailers” brought suit in the Western District June 20 against Bob Marley’s historic band of the same name. The complaint states that plaintiffs John M. “Buck” Ormsby and Kent E. Morrill have been performing as “The Wailers” (Washington) since 1959. Plaintiffs allege they obtained federal registrations for the WAILERS service mark in January 2003, which they say Aston “Family Man” Barrett and the other members of “The Wailers” (Jamaica) have infringed and diluted.According to the complaint: “The Wailers have influenced the musical careers of bands such as The Beatles, Jimi Hendrix, The Sonics, the Rolling Stones, and Paul Revere and The Raiders. Most notably, The Wailers’ performance of the song ‘Louie Louie’ inspired The Kingsmen of Portland Or...
Southern District of New York Decides TEMPUR-PEDIC Dilution Case
2007-05-15 06:24:00 In a mammoth 73-page opinion, the Southern District of New York May 4 decided a trademark case involving grey-market TEMPUR-PEDIC mattresses. The summary judgment order in Dan-Foam A/S v. Brand Named Beds, LLC, is chock full of trademark law. In fact, it’s so chock full I’ll only summarize the dilution portion of the opinion.Plaintiffs Dan-Foam A/S and Tempur-Pedic, Inc., manufacture and distribute TEMPUR-PEDIC mattresses. They sued defendant Brand Name Beds (“BNB”), an unauthorized seller of TEMPUR-PEDIC mattresses. In a typical grey-market goods trademark case, a cause of action for dilution arises when (1) “material differences” exist between the goods sold by the owner of a famous trademark and its authorized or licensed dealers and those sold by the unauthorized dealer, and (2) the unauthorized dealer sells the materially different trademarked goods in a manner that would be likely to dilute the strength of the trademark owner’s fa...
Court Finds No Secondary Meaning for Color Mark Means No Trademark Claims
2007-05-12 19:05:00 On May 4, Western District Judge Ricardo Martinez granted defendant Kalmbach Publishing Co.’s motion for partial summary judgment dismissing plaintiff Rubber Stamp Management Inc.’s federal trademark claims. The Browns Point, Wash.-based craft supplier and seller of decorative rubber stamps had alleged that the defendant publisher gives consumers a false impression about the origin of its craft-making booklets by using a purple arch design that is similar to the “purple arch mark” plaintiff uses on its Web site.Plaintiff’s mark (depicted below) appears on its Web site along with the registered logo, “Addicted to Rubber Stamps,” and a cartoon image of a woman jumping enthusiastically with a rubber stamp held in each hand, placed in the center of the arch. Only the purple in these two other marks was at issue in the case. Plaintiff has used its mark since 2001.Defendant’s design appears on the cover of its Easy-Does-It Ser...
No Secondary Meaning for Color Mark Means No Enforceable Trademark Rights
2007-05-12 19:05:00 On May 4, Western District Judge Ricardo Martinez granted defendant Kalmbach Publishing Co.’s motion for partial summary judgment dismissing plaintiff Rubber Stamp Management Inc.’s federal trademark claims. The Browns Point, Wash.-based craft supplier and seller of decorative rubber stamps had alleged that the defendant publisher gives consumers a false impression about the origin of its craft-making booklets by using a purple arch design that is similar to the “purple arch mark” plaintiff uses on its Web site.Plaintiff’s mark (depicted below) appears on its Web site along with the registered logo, “Addicted to Rubber Stamps,” and a cartoon image of a woman jumping enthusiastically with a rubber stamp held in each hand, placed in the center of the arch. Only the purple in these marks was at issue in the case. Plaintiff has used its marks since 2001.Defendant’s design appears on the cover of its Easy-Does-It Series bookl...
Court Dismisses Trademark Claims in JARRITOS Soft Drink Case
2007-05-09 05:20:00 On May 2, the Northern District of California dismissed plaintiff Jarritos, Inc.’s infringement and dilution claims against the defendant owners of a San Francisco restaurant called “Los Jarritos.” Plaintiff- alleged it manufactures and distributes soft drinks under various JARRITOS trademarks and that defendants’ use of the “Los Jarritos” name and logo in connection with their restaurant infringed and diluted plaintiff’s mark.Defendants moved for summary judgment. On plaintiff’s infringement claim, the court found that even if the parties’ goods were considered related, “the absence of any evidence demonstrating that any of the remaining eight [Sleekcraft] factors tip in Plaintiff’s favor warrant[s] granting summary judgment. Plaintiff bears the burden of demonstrating that ‘confusion is probable, not simply a possibility.’ Cohn v. Petsmart, Inc., 281 F.3d 837, 842-4...
Louis Vuitton Court Finds TDRA Not Retroactive for Monetary Relief
2007-04-28 18:35:00 On April 24, the Southern District of New York revisited Louis Vuitton Malletier v. Dooney & Bourke, Inc., in preparation for the parties’ upcoming infringement and dilution trial stemming from their arguably similar handbags. (Louis Vuitton’s complaint here.) In doing so, the court found the Trademark Dilution Revision Act’s “likelihood of dilution” standard did not apply retroactively to claims for monetary relief. Therefore, it found Louis Vuitton must prove “actual dilution” before it can recover damages. This finding differs from courts’ retroactive application of the TDRA to requests for injunctive relief. The TDRA states: “In an action brought under this subsection, the owner of a famous mark shall be entitled to injunctive relief as set forth in section 1116 of this title. The owner of the famous mark shall also be entitled to the remedies set forth in sections 1117(a) [providing for dama...
Levi Strauss Obtains Default Judgment on Dilution and Infringement Claims
2007-04-21 13:42:00 On April 17, plaintiff Levi Strauss & Co. obtained a default judgment against defendant Kolonaki, Inc., on its dilution and trademark infringement claims brought in Levi Strauss & Co. v. Fox Hollow Apparel Group, LLC, et al., No. 06-3765, 2007 WL 1140648 (N.D. Cal.). Levi originally brought suit against seven companies, all of which were dismissed except for Kolonaki, owner of the ”Georgiou”- chain of retail clothing shops. Levi alleged Kolonaki began selling jeans and capri pants with stitching designs that were confusingly similar to Levi’s “Arcuate” design mark (pictured at right). Levi served Kolonaki but Kolonaki did not respond. As a result, the clerk of the court entered default against Kolonaki. Levi then moved for default judgment. The court granted the motion and awarded Levi $75,600 in damages and $10,075.54 in attorneys’ fees and costs. The court also enjoined Kolonaki from manufactur...
The Trademark Dilution Revision Act Is Misnamed
2007-04-19 03:48:00 As I was attending the International Trademark Association’s roundtable today on the Trademark Dilution Revision Act, I had a thought: the Trademark Dilution Revision Act is misnamed. It really should be called the “Trademark Dilution Replacement Act.” To my mind, that title would be more accurate because the Trademark Dilution Revision Act does not revise the Federal Trademark Dilution Act as much as replace it.Sure, much of the FTDA survives in the TDRA. But as I understand it, the TDRA replaces all of 15 U.S.C. § 1125(c) — where the FTDA used to reside — with brand new text. H.R. 683, which upon enactment became the TDRA, states: “Section 43 of the Trademark Act of 1946 (15 U.S.C. 1125) is amended — (1) by striking subsection (c) and inserting the following…” which goes on to recite the text of the TDRA. In other words, the old was thrown out and replaced with the new. Right?The Second Circuit apparent...
Moseley Lawyer Discusses Dilution
2007-04-18 04:09:00 I can’t for the life of me remember where I first saw this. Some resourcefu-l blogger must have pointed me to it in the last week or so. In any case, it’s been on my mind ever since. It’s an interview with Scot Duvall (pictured left), attorney for Victor and Cathy Moseley of “Victor’s Secret” and Moseley v. V Secret fame. In it, Mr. Duvall discusses Moseley, the need for a dilution cause of action, and his work last year with the International Trademark Association to revise the statute.His view on the new “likelihood of dilution” standard:“The ‘likelihood of dilution’ standard is offset by a narrowing of what constitutes a ‘famous’ mark, which is a mark of widespread renown recognized by the general consuming public of the United States. This is a watershed moment in the federal law of dilution. Brands that are ‘famous’ only in a niche prod...
Texas Court Grants Injunction Based on Trademark Dilution Revision Act
2007-04-09 03:58:00 On March 28, the Southern District of Texas granted a preliminary injunction in Pet Silk, Inc. v. Jackson, No. 06-2465, __ F.Supp.2d __, 2007 WL 951635 (S.D. Tex.), against two defendants based on the Trademark Dilution Revision Act. In doing so, it became the first district court to interpret the lessened burden of proof in a favor of the plaintiff.Plaintiff Pet Silk (PSI) sells pet grooming products through distributors worldwide. It is the exclusive licensee of the registered trademark PET SILK. Defendants Robert and Maria Jacobson, doing business as MJM Company, were an approved distributor of PET SILK products for four years. MJM operated and continues to operate several websites, including www.petsilkonline.com and www.mjm-petsilk.com. In July 2006, Pet Silk ended its relationship with MJM. With the exception of posting a disclaimer on one of its websites, however, MJM continued to hold itself out as a distributor or reseller of PET SILK products. Ther...
Haute Diggety! Fourth Circuit Set to Interpret Trademark Dilution Revision
2007-03-16 04:35:00 The Fourth Circuit is set to consider Louis Vuitton’s appeal of its dismissed dilution claim in Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, No. 06-2267. This case may become the first appellate decision to interpret the Trademark Dilution Revision Act. Earlier this month, the Second Circuit revived Starbucks Corp.’s dilution claim against a New Hampshire coffee company based on the TDRA but did not shed light on how the new statute would be interpreted. (STL discussion of Starbucks Corp. v. Wolfe’s Borough Coffee Inc. here.)The Louis Vuitton case (which STL discussed here), involves the seller of novelty dog toys who markets a chew toy under the name “Chewy Vuiton.” Louis Vuitton calls it dilution. Haute Diggity Dog calls it parody. Applying the TDRA, the Eastern District of New York sided with the seller and dismissed Louis Vuitton’s dilution claim, which Louis Vuitton has appealed.Earlier this month, the Inte...
Haute Diggity! Fourth Circuit Set to Interpret Trademark Dilution Revision
2007-03-16 04:35:00 The Fourth Circuit is set to consider Louis Vuitton’s appeal of its dismissed dilution claim in Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, No. 06-2267. This case may become the first appellate decision to interpret the Trademark Dilution Revision Act. Earlier this month, the Second Circuit revived Starbucks Corp.’s dilution claim against a New Hampshire coffee company based on the TDRA but did not shed light on how the new statute would be interpreted. (STL discussion of Starbucks Corp. v. Wolfe’s Borough Coffee Inc. here.)The Louis Vuitton case (which STL discussed here), involves the seller of novelty dog toys who markets a chew toy under the name “Chewy Vuiton.” Louis Vuitton calls it dilution. Haute Diggity Dog calls it parody. Applying the TDRA, the Eastern District of New York sided with the seller and dismissed Louis Vuitton’s dilution claim, which Louis Vuitton has appealed.Earlier this month, the Inte...
Survey Evidence Precludes Summary Judgment on Nike's Dilution Claim
2007-03-05 08:11:03 Things are happening fast on the dilution front. On February 27, the Eastern District of California denied cross-motions for summary judgment on Nike’s dilution claim in Nike, Inc. v. Nikepal Int’l, Inc., No. 05-1468, 2007 WL 609864 (E.D. Calif). This appears to be the fifth case that either interprets or is controlled by the Trademark Dilution Revision Act. Unfortunately, it does not shed too much light on the statute’s new standards.The well-known shoe manufacturer sued Nikepal Int’l, an importer, exporter, and distributor of syringes, valves and cardboard boxes, on a number of trademark theories stemming from the defendant’s use of NIKEPAL as a trademark. Both parties moved for summary judgment on Nike’s claim of dilution by blurring. In support of its motion, Nike submitted survey evidence allegedly indicating “a substantial majority of laboratory equipment purchasers think of NIKE” when encounter...
Second Circuit Revives Starbucks Dilution Claim Based on Amended Dilution A
2007-03-03 20:09:20 The Second Circuit has vacated the Southern District of New York’s dismissal of Starbucks Corp.’s dilution claim against Wolfe’s Borough Coffee, Inc. In this case, Starbucks alleges that Wolfe’s sale of coffee under the names “Mister Charbucks” or “Mr. Charbucks” dilutes the STARBUCKS trademark for coffee. This appears to be the first appellate decision based on the Trademark Dilution Revision Act. The Second Circuit found: “Subsequent to the district court’s order, Congress amended the [Federal Trademark Dilution Act] in response to the Supreme Court’s decision in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 433 (2003), which had construed the FTDA to require a showing of actual dilution, as opposed to likelihood of dilution. The FTDA, as amended effective October 6, 2006, entitles the owner of a famous, distinctive mark to an injunction against the user of a mark that is ‘likely to cause diluti...
Two More Dilution Cases in the Pipeline
2007-03-03 20:09:20 I’m still pretty energized from the CLE I went to on Trademark Trial and Appeal Board practice. On Friday, I attended a great presentation on the Trademark Dilution Revision Act, the federal statute that in October replaced the Federal Trademark Dilution Act. Among other things, presenter J. Alison Grabell covered the three dilution cases interpreting the TDRA that STL has covered: Luis Vuitton v. Haute Diggity Dog, AutoZone v. Strick, and Century 21 Real Estate v. Century Surety Co. (discussed here and here). What was particularly interesting to learn is that there are two more dilution cases in the offing: California Board Sports v. Vans, No. 06-2365 (S.D. Calif., filed Oct. 25, 2006) (complaint here), and AmeriCash Loans v. Americash Advance, No. 07-774 (N.D. Ill., filed Feb. 8, 2007) (complaint here). These cases eventually may reveal a lot about our new dilution statute. Stay tuned. |
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