Beebe Trademark Law: An Open-Source Casebook II. Trademark Infringement 3
Download 1.02 Mb.
|
C. Trademark DilutionLanham Act § 43(c)63 provides protection for trademarks against “dilution,” which is probably the single most muddled concept in all of trademark doctrine. Of the many reasons for this, perhaps the most significant—and avoidable—is that trademark courts and commentators tend to speak of several different species of trademark dilution without identifying them any more specifically than by the generic name “dilution.” From the very beginning of your study of dilution, it may be worthwhile to distinguish among three specific species of dilution: (1) dilution of uniqueness, (2) dilution by “blurring,” and (3) dilution by “tarnishment.” Because dilution is so easily misunderstood, each form of dilution is briefly discussed below before we turn to the representative case law. Note that, strictly speaking, U.S. trademark law protects against only dilution by blurring and dilution by tarnishment. A brief description of dilution of a trademark’s uniqueness is offered because it is arguably what the trademark practitioner and scholar Frank Schechter had in mind when he first originated the concept of trademark dilution in the 1920s. Dilution of Uniqueness. In his seminal 1927 article The Rational Basis of Trademark Protection, 40 Harv. L. Rev. 813 (1927), Schechter introduced to American law the concept of trademark dilution. By “dilution,” Schechter arguably meant to refer to the impairment of a trademark’s uniqueness,64 or what modern marketing doctrine would term its “brand differentiation.” His primary concern was to preserve what he variously termed a mark’s “arresting uniqueness,” its “singularity,” “identity,” and “individuality,” its quality of being “unique and different from other marks.” Schechter was not so much concerned with a trademark’s distinctiveness of source, but with a trademark’s distinctiveness from other marks, not its “source distinctiveness,” but its “differential distinctiveness.”65 In Schechter’s view, trademark uniqueness was worth protecting because it generated “selling power.” Certain very strong marks were not simply a means of identifying and advertising source. In a new age of mass production, they were also a means of endowing the goods to which they were attached with the characteristic of uniqueness as against the crowds of other mass-produced goods in the marketplace, a characteristic for which consumers would pay a premium. Schechter believed, quite rightly at the time, that antidilution protection was necessary because anti-infringement protection, based on consumer confusion as to source, would not fully preserve the uniqueness of famous marks. In situations where a defendant used a famous mark on goods unrelated to those on which the famous mark normally appeared (e.g., kodak pianos, rolls-royce chewing gum), consumers would not likely assume that the defendant’s product had the plaintiff as its source. Thus, no cause of action for consumer confusion as to source would lie. The beauty of Schechter’s original conception of antidilution protection was that it was relatively easy to put into practice. Uniqueness is an absolute concept. A mark is either unique or it is not. If a senior mark is unique in the marketplace and a junior mark appears that is identical to it, then the junior mark will destroy the senior mark’s uniqueness. Thus, the test for dilution was an essentially formal one. The judge need only consider the identity or close similarity of the parties’ marks. If they were identical or closely similar, then the loss of uniqueness could be presumed. See Eli Lilly & Co. v. Natural Answers, Inc. 233 F.3d 456, 468-69 (7th Cir. 2000) (considering only similarity of the parties’ marks and the “renown” of the senior mark in finding a likelihood of dilution); Ringling Bros-Barnum & Bailey Combined Shows, Inc. v. Utah Division of Travel Development, 170 F.3d 449, 464 (4th Cir. 1999) (“[O]nly mark similarity and, possibly, degree of ‘renown’ of the senior mark would appear to have trustworthy relevance under the federal Act.”). Where the consumer confusion test was a messy and unpredictable empirical analysis centered on the consumer, the trademark dilution test was a simple and relatively predictable analysis centered on the trademark. Note that Schechter’s original conception has never been enacted into law, and the language of Lanham Act § 43(c) is careful to steer clear of it. Indeed, in the early stages of the drafting of the Act, a form of antidilution protection based on “uniqueness” was proposed and rejected.66 Dilution by Blurring. The idea underlying the concept of trademark “blurring” is that the defendant’s use of a mark similar or identical to the plaintiff’s mark, though perhaps not confusing as to source, will nevertheless “blur” the link between the plaintiff’s mark and the goods or services to which the plaintiff’s mark is traditionally attached. In modern marketing parlance, anti-blurring protection seeks to preserve a brand’s “typicality,” the brand’s “ability to conjure up a particular product category.” Alexander F. Simonson, How and When Do Trademarks Dilute: A Behavioral Framework to Judge “Likelihood of Dilution”, 83 Trademark Rep. 149, 152-53 (1993). In Ty Inc. v. Perryman, 306 F.3d 509 (7th Cir. 2002), Judge Posner provides a hypothetical example of blurring: [T]here is concern that consumer search costs will rise if a trademark becomes associated with a variety of unrelated products. Suppose an upscale restaurant calls itself “Tiffany.” There is little danger that the consuming public will think it's dealing with a branch of the Tiffany jewelry store if it patronizes this restaurant. But when consumers next see the name “Tiffany” they may think about both the restaurant and the jewelry store, and if so the efficacy of the name as an identifier of the store will be diminished. Consumers will have to think harder—incur as it were a higher imagination cost—to recognize the name as the name of the store. So “blurring” is one form of dilution. Id. at 511 (citations omitted). As Judge Posner’s description suggests, the increase in “imagination cost” that blurring is thought to cause forms the basis of the economic defense of antidilution protection. As Judge Posner explained, “[a] trademark seeks to economize on information costs by providing a compact, memorable and unambiguous identifier of a product or service. The economy is less when, because the trademark has other associations, a person seeing it must think for a moment before recognizing it as the mark of the product or service.” Richard Posner, When Is Parody Fair Use?, 21 J. Legal Studies 67, 75 (1992). The blurring theory of dilution is highly empirical in orientation. For the judge to find that a junior mark “blurs” a senior mark, the judge must find that the junior mark is causing consumers to “think for a moment” before recognizing that the senior mark refers to the goods of the senior mark’s owner.67 A merely formal analysis of the similarity of the marks is insufficient. The judge must evaluate the likely effect of the junior mark on the perceptions of actual consumers and must in the process take into account such factors as the degree of distinctiveness—or typicality—of the senior mark and the sophistication of the relevant consumer population. The analysis is once again centered on the consumer. Dilution by Tarnishment. Dilution by tarnishment is fundamentally different from dilution by blurring (and arguably has nothing to do with “dilution” as Schechter originally formulated the concept). Tarnishment describes damage to the positive associations or connotations of a trademark. See Deere & Co. v. MTD Prods., Inc., 41 F.3d 39, 43 (2d Cir. 1994) (“‘Tarnishment’ generally arises when the plaintiff's trademark is linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory context likely to evoke unflattering thoughts about the owner's product[s].”). In, for example, New York Stock Exchange, Inc. v. New York, New York Hotel, LLC, 293 F.3d 550 (2d Cir. 2002), a Las Vegas casino called its players club the “New York $lot Exchange.” Owners of the new york stock exchange trademark took offense at the suggestion that their stock exchange was in some sense a venue for gambling, if not also for stacked odds, and sued. The district court granted summary judgment to the casino. New York Stock Exch., Inc. v. New York, New York Hotel, LLC, 69 F. Supp. 2d 479, 482 (S.D.N.Y. 1999). On appeal, the Second Circuit reversed. Among other things it found, with respect to the plaintiff’s New York state law tarnishment claim, that “[a] reasonable trier of fact might…find that the Casino’s humorous analogy would injure NYSE’s reputation.” New York Stock Exch., Inc. v. New York, New York Hotel LLC, 293 F.3d 550, 558 (2d Cir. 2002) (analyzing the issue under New York state anti-tarnishment law). The Elements of a Dilution Claim. In Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007), the Fourth Circuit set forth the main elements of a claim for dilution by blurring or dilution by tarnishment. The plaintiff must show: (1) that the plaintiff owns a famous mark that is distinctive; (2) that the defendant has commenced using a mark in commerce that allegedly is diluting the famous mark; (3) that a similarity between the defendant's mark and the famous mark gives rise to an association between the marks; and (4) that the association is likely to impair the distinctiveness of the famous mark or likely to harm the reputation of the famous mark.
In light of the above, the statutory language of § 43(c) excerpted below will reward a close reading. We then turn first to the fame requirement for antidilution protection and then to anti-blurring protection and anti-tarnishment protection.68 Lanham Act § 43(c), 15 U.S.C. § 1125(c) (c) Dilution by blurring; dilution by tarnishment (1) 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. (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: (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 under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register. (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: (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. (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. (3) Exclusions. The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection: (A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with— (i) advertising or promotion that permits consumers to compare goods or services; or (ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner. (B) All forms of news reporting and news commentary. (C) Any noncommercial use of a mark. …
Directory: wp-content -> uploads -> 2016 2016 -> 2017 afoCo Landmark Scholarship Program 2016 -> Instructions for the Preparation of Camera-Ready Contributions to the Conference Proceedings 2016 -> Step student Scholarships for Year 10-13 2016 -> The united church of canada 2016 -> Idan raichel biography – May 2016 Brief Producer, keyboardist, Lyricist, composer and Performer Idan Raichel 2016 -> An introduction to centre’s interventions expanding access to justice 2016 -> Sanchar Shakti 2016 -> Unit analysis should help here. We want number of bananas 2016 -> The Autobiography of Elder Joseph Bates 2016 -> The Great Heat and the Rhode Island Deep Water Bay Scallop (Argopecten irradians) Fishery 1875-1905 Download 1.02 Mb. Share with your friends:
|