No summary, proceed to other tabs.

Click the topic headings to navigate through the cases and quotes concerning that topic.
Expand All | Contract All

  • Statute regarding cause of action for the dilution of famous marks.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • The Lanham Act provides for a cause of action for the dilution of famous marks. Sections 13 and 43(c) of the Lanham Act, 15 U.S.C. §§1063 and 1125(c).
  • In the Trademark Amendments Act of 1999 (TAA), Congress provided that opposition and cancellation proceedings may be based on claims of dilution.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • In the Trademark Amendments Act of 1999 (TAA), Congress provided that opposition and cancellation proceedings may be based on claims of dilution. See 15 U.S.C. §§ 1063(a) and 1064.
  • A notice of opposition or petition for cancellation filed before enactment of the Trademark Amendments Act may, assuming no prejudice to the defending applicant or registrant, be amended to add a claim of dilution, so long as the involved application or registration was filed on or after January 16, 1996.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • "A notice of opposition or petition for cancellation filed before enactment of the Trademark Amendments Act may, assuming no prejudice to the defending applicant or registrant, be amended to add a claim of dilution, so long as the involved application or registration was filed on or after January 16, 1996." Polaris Industries v. DC Comics, 59 USPQ2d 1798, 1800 (TTAB 2000); Boral Ltd. V. FMC Corp., 59 USPQ2d 1701, 1703 (TTAB 2000).
  • Definition of dilution by blurring.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • Dilution by blurring occurs when a substantial percentage of consumers, upon seeing the junior party's use of a mark on its goods [in this case GULPY used in connection with portable pet water dishes], are immediately reminded of the famous mark [in this case BIG GULP] and associate the junior party's use with the owner of the famous mark, even if they do not believe that the goods come from the famous mark's owner. Toro Co. v. ToroHead Inc., supra, 61 USPQ2d at 1183.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • The Board held in Toro that "blurring occurs when a substantial percentage of consumers, upon seeing the junior party's use of a mark on its goods, are immediately reminded of the famous mark and associate the junior party's use with the owner of the famous mark, even if they do not believe that the goods come from the famous mark's owner." Toro, 61 USPQ2d at 1183.
  • Blurring requires one viewing the newcomer's mark either to conclude that the famous mark is now associated with a new product or service or to associate the famous mark with its owner less strongly or exclusively.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • Moseley suggests that blurring requires one viewing the newcomer's mark either to conclude that the famous mark is now associated with a new product or service or to associate the famous mark with its owner less strongly or exclusively. Moseley, 65 USPQ2d at 1808.
  • Definition of dilution under the FTDA.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • The FTDA defines "dilution" as: "the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of, (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception." 15 U.S.C. § 1127.
  • The Federal Trademark Dilution Act provides a federal cause of action for the dilution of famous marks, and the Trademark Amendments Act of 1999 requires the Board to consider dilution under the FTDA as a ground for opposition.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • The Federal Trademark Dilution Act (FTDA) provides a federal cause of action for the dilution of famous marks, and the Trademark Amendments Act of 1999 (TAA) "requires the Board to consider dilution under the FTDA as a ground for opposition."26 Enterprise Rent-ACar Company v. Advantage Rent-A-Car, Inc., __ F.3d __, __ USPQ2d __ (Appeal No.02-1444, slip opinion p. 2) (Fed. Cir. 2003), Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001).
  • The FTDA and TAA protect any mark that is both distinctive and famous against use and registration of marks that would lessen the capacity of the famous mark to identify and distinguish the famous mark owner's goods or services.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • The FTDA and TAA protect any mark that is both distinctive and famous against use and registration of marks that would lessen the capacity of the famous mark to identify and distinguish the famous mark owner's goods or services. Moseley v. V Secret Catalogue Inc., __ U.S. __, 65 USPQ2d 1801, 1802 (2003). FOOTNOTE 26 "The FTDA, 109 Stat. 985, is codified at Section 43(c) of the Lanham Act, 15 U.S.C. §1125(c), with dilution defined in Section 45, 15 U.S.C. §1127. The TAA, Pub. L. No. 106-43, 113 Stat. 218, is codified in various sections of 15 U.S.C.; but for our purposes, we focus on Sections 2(f), 13 and 14 of the Lanham Act, 15 U.S.C. §§ 1052(f), 1063 and 1064."
  • Prior to the FTDA, many courts analyzed state dilution claims under the six "Sweet" factors.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Prior to the FTDA, many courts analyzed state dilution claims under the six "Sweet" factors, named after the concurring opinion of Judge Sweet in Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1065, 1035, 10 USPQ2d 1961, 1969 (2d Cir. 1989) (Sweet, J., concurring).19

        FOOTNOTE 19 "The six Sweet factors are: (1) the similarity of the marks, (2) the similarity of the goods; (3)the sophistication of consumers; (4) predatory intent, (5) the renown of the senior mark; and (6) renown of the junior mark. Id."

  • The Sweet factors have not been widely accepted as a test for dilution under the FTDA and we decline to apply the test.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • The Sweet factors have not been widely accepted as a test for dilution under the FTDA and we decline to apply the test here. Ringling Bros., 170 F.3d at 464, 50 USPQ2d at 1077 (Sweet factor "analysis simply is not appropriate for assessing a claim under the federal Act"); I.P. Lund, 163 F.3d at 49, 49 USPQ2d at 1241 (Court agreed that the use of Judge Sweet's six-factor test is inappropriate); McCarthy, 24:94.2 ("[S]ince four of the six factors are of dubious relevance to a case under the 1996 federal Act, use of the six-factor test is bound to lead to erroneous results").
  • Factors to determine whether dilution will occur.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Factors that we will look at in determining whether dilution will occur include two of the Sweet factors (similarity of the marks and renown of the senior party, i.e., the person claiming fame) as well as whether target customers are likely to associate two different products with the mark even if they are not confused as to the different origins of these products. Hasbro, 66 F. Supp.2d at 136, 52 USPQ2d at 1417.
  • For dilution purposes, a party must prove more than confusing similarity; it must show that the marks are identical or "very or substantially similar.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Starting first with the similarity of the marks, we note that the marks are not identical. For dilution purposes, a party must prove more than confusing similarity; it must show that the marks are identical or "very or substantially similar." Nabisco, 191 F.3d at 218, 51 USPQ2d at 1889, quoting, Mead Data, 875 F.2d at 1029, 10 USPQ2d at 1964 (majority opinion).
  • The test for blurring is not the same as for determining whether two marks are confusingly similar for likelihood of confusion purposes.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • The test for blurring is not the same as for determining whether two marks are confusingly similar for likelihood of confusion purposes. "To support an action for dilution by blurring, ‘the marks must be similar enough that a significant segment of the target group sees the two marks as essentially the same.'" Luigino's, Inc., 170 F.3d at 832, 50 USPQ2d at 1051) (quoting 2 McCarthy on Trademarks and Unfair Competition, § 24:90.1 (4th ed. 1998). Therefore, differences between the marks are often significant. Mead Data (LEXUS for cars did not dilute LEXIS for database services).
  • "To support an action for dilution by blurring, ‘the marks must be similar enough that a significant segment of the target group sees the two marks as essentially the same.'"
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • "To support an action for dilution by blurring, ‘the marks must be similar enough that a significant segment of the target group sees the two marks as essentially the same.'" Luigino's, Inc., 170 F.3d at 832, 50 USPQ2d at 1051) (quoting 2 McCarthy on Trademarks and Unfair Competition, § 24:90.1 (4th ed. 1998). Therefore, differences between the marks are often significant. Mead Data (LEXUS for cars did not dilute LEXIS for database services).
  • Factors for establishing dilution by blurring.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • The Lanham Act provides the following guidance:
        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.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • The Board also held that three factors should be considered, specifically, (1) the similarity of the marks; (2) renown of the senior party, i.e., the person claiming fame; and (3) "whether target customers are likely to associate two different products with the mark even if they are not confused as to the different origins of these products." Id.
  • The test for blurring is not the same as for determining whether two marks are confusingly similar for likelihood of confusion purposes.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • As the Board explained in Toro Co. v. ToroHead, Inc.:
        "The test for blurring is not the same as for determining whether two marks are confusingly similar for likelihood of confusion purposes. "To support an action for dilution by blurring, ‘the marks must be similar enough that a significant segment of the target group sees the two marks as essentially the same.'" Luigino's, Inc., 170 F.3d at 832, 50 USPQ2d at 105169 (quoting 2 McCarthy on Trademarks and Unfair Competition, §24:90.1 (4th ed. 1998). Therefore, differences between the marks are often significant. Mead Data (LEXUS for cars did not dilute LEXIS for database services).70" Toro Co. v. ToroHead, Inc., supra, 61 USPQ2d at 1183 (TORO and ToroMR and Design are not substantially similar for dilution purposes).

        FOOTNOTE 70 "Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1065, 10 USPQ2d 1961 (2nd Cir. 1989)."

  • There must be something more than just a similarity of marks to show the relatedness of goods or, again, the owner of a famous mark would have a right in gross.
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • We recognize that, when a mark is famous, the degree of relatedness of the goods need not be as great. We also recognize that, even if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods. See Recot Inc. v. M.C. Becton, 214 F.3d at 1329, 54 USPQ2d at 1898. However, there must be something more than just a similarity of marks to show this relatedness or, again, the owner of a famous mark would have a right in gross. Therefore, even if opposer had been able to establish that its mark is famous, opposer has simply failed to show any relatedness as to origin of cigarettes or tobacco and opposer's performing services or its other goods.
  • We recognize that, when a mark is famous, the degree of relatedness of the goods need not be as great.
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • We recognize that, when a mark is famous, the degree of relatedness of the goods need not be as great.
  • We also recognize that, even if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • We also recognize that, even if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods. See Recot Inc. v. M.C. Becton, 214 F.3d at 1329, 54 USPQ2d at 1898.
  • Statutory basis for protection of famous marks.
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • Section 43(c)(1) of the Trademark Act, 15 U.S.C. § 1145, provides that "The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is provided in this subsection." This ground is made available for opposition proceedings by Section 13(a) of the Act, 15 U.S.C. § 1063(a).
  • One of the factors to be considered in determining whether dilution has been proven is whether the opposer's mark is famous.
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • As set out in the Act itself, and as interpreted by case law, one of the factors to be considered in determining whether dilution has been proven is whether the opposer's mark is famous. See Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001).
  • In the case of an intent-to- use application, an owner of an allegedly famous mark must establish that its mark had become famous prior to the filing date of the trademark application or registration against which it files an opposition or cancellation proceeding.
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • The operative date by which opposer must prove its mark became famous is August 6, 2001, which is the filing date of applicant's application. In Toro Co. v. ToroHead Inc., supra at 1174, the Board held that in the case of an intent-to- use application, an owner of an allegedly famous mark must establish that its mark had become famous prior to the filing date of the trademark application or registration against which it files an opposition or cancellation proceeding.
  • In the absent of other evidence of use, the filing date of applicant's application will be used as the date of his first use and/or constructive use of the mark.
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • However, because applicant has not submitted any evidence of his use, it is consistent with the analysis set out in TORO, as well as case law involving a determination of priority, to treat the filing date of applicant's application as the date of his first use and/or constructive use of the mark. See Levi Strauss & Co. v. R. Josephs Sportswear Inc., 36 USPQ2d 1328 (TTAB 1994) and cases cited therein.
  • Evidence: Evidence, submitted by opposer, which was created after the date of first use and/or constructive use of the mark is no given any consideration in the determination of whether opposer has proven dilution.
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • Accordingly, in our determination of whether opposer has proven dilution, much of the evidence submitted by opposer can be given no consideration because it consists of printed materials dated after August 6, 2001, and copies of television broadcasts which aired after that date.
  • Statutory basis of protection of famous marks under the Federal Trademark Dilution Act of 1995.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • The Federal Trademark Dilution Act of 1995 (FTDA) provides that: "The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is provided in this subsection." 15 U.S.C. § 1125(c)(1).
  • Elements the owner of an allegedly famous mark must prove in a claim of dilution in a court proceeding.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • In a court proceeding, in order for an owner of an allegedly famous mark to prove its claim of dilution, it must provide sufficient evidence that (1) the other party's use is in commerce, (2) the other party adopted its mark after the plaintiff's mark became famous, (3) the mark is famous, and (4) the other party diluted the mark. Syndicate Sales Inc. v. Hampshire Paper Corp., 192 F.3d 633, 639, 52 USPQ2d 1035, 1039-40 (7th Cir. 1999); Hasbro, 66 F. Supp.2d at 130, 52 USPQ2d at 1412. Some courts add a fifth factor: Is the mark distinctive" Nabisco, Inc. v. PF Brands Inc., 191 F.3d 208, 215, 51 USPQ2d 1882, 1886 (2d Cir. 1999).
  • Courts have held that dilution is an extraordinary remedy.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Before we begin our analysis of the facts in this particular case, we note that courts have held that dilution is an "extraordinary remedy." Advantage Rent-A Car Inc. v. Enterprise Rent-A-Car Co., 238 F.3d 378, 381, 57 USPQ2d 1561, 1563 (5th Cir. 2001).
  • Unlike in likelihood of confusion cases, we will not resolve doubts in favor of the party claiming dilution.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • "[W]e simply cannot believe that, as a general proposition, Congress could have intended, without making its intention to do so perfectly clear, to create property rights in gross, unlimited in time (via injunction), even in ‘famous' trademarks." Ringling Bros.-Barnum & Bailey Combined Shows v. Utah Division of Travel Development, 170 F.3d 449, 459, 50 USPQ2d 1065, 1073 (4th Cir. 1999). See also Nabisco, 191 F.3d at 224 n.6, 51 USPQ2d at 1894 n.6 (quotation marks omitted)("We agree that the dilution statutes do not prohibit all use of a distinctive mark that the owners prefer not be made .... [W]e agree with the Fourth Circuit that the dilution statutes do not create a ‘property right in gross'"); I.P. Lund, 163 F.3d at 47, 49 USPQ2d at 1239 ("[T]he standard for fame and distinctiveness required to obtain anti-dilution protection is more rigorous than that required to seek infringement protection"). In light of the above guidance, we start by noting that, unlike in likelihood of confusion cases, we will not resolve doubts in favor of the party claiming dilution.
  • The use alleged to dilute a mark must be commercial and in commerce.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • We begin our discussion with the factor that requires that the use alleged to dilute a mark be commercial and in commerce. 15 U.S.C. § 1125(c)(1).
  • Trademark applications may be filed based on an intent to use a mark in commerce.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Trademark applications may be filed based on an intent to use a mark in commerce. 15 U.S.C. § 1051(b)(1).
  • An application based on an intent to use the mark in commerce satisfies the commerce requirement of the FTDA for proceedings before the Board.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Such applications are often published for opposition prior to the applicant's using the mark in commerce. Thus, many opposition proceedings involve marks that are not actually used. If marks based on an intent to use could not be opposed on the ground of dilution, the intent of Congress to provide for the "[r]esolution of the dilution issue before the Board, as opposed to the Federal District Court, [and thereby] result in more timely, economical, and expeditious decisions" would be frustrated. H.R. REP. No. 106-250, at 5 (1999). To require actual use by the applicant before a dilution claim could be recognized at the Board would, practically speaking, result in most dilution claims being brought as cancellation proceedings or in district court. Since the Board cannot issue injunctions, once a party has begun using the mark in commerce, it is much more likely that the focus will shift to the Federal courts. This would defeat the articulated purpose of the TAA. Therefore, we hold that an application based on an intent to use the mark in commerce satisfies the commerce requirement of the FTDA for proceedings before the Board.7
        FOOTNOTE 7 "We are aware of the split in the Circuit Courts on the issue of whether actual dilution must be shown by the plaintiff to prevail in a district court case involving a dilution claim. Compare Ringling Bros.-Barnum & Bailey Combined Shows Inc. v. Utah Division of Travel and Development, 170 F.3d 449, 50 USPQ2d 1065 (4th Cir. 1999) and Westchester Media v. PRL USA Holdings Inc., 214 F.3d 658, 55 USPQ2d 1225 (5th Cir. 2000) (actual dilution required) with Nabisco (2d Cir.) and Eli Lilly & Co. v. Natural Answers Inc., 233 F.3d 456, 56 USPQ2d 1942 (7th Cir. 2000) (actual dilution not required). This question is irrelevant to our determination here. The legislative history shows that Congress intended to set up a dilution proceeding at the Board in which an owner of a famous mark could prevail "before dilution type damage has been suffered in the marketplace by the owner of a famous mark." H.R. REP. No. 106- 250, at 5 - 6 (1999). If we interpreted the TAA in a wooden manner, most owners of famous marks would not be able bring dilution claims at the Board against an application based on an intent to use or even limited actual use. See, e.g., Federal Express Corp. v. Federal Espresso Inc., 201 F.3d 168, 53 USPQ2d 1345 (2d Cir. 2000) (No injunctive relief available when there was a tiny overlap of customers of plaintiff's delivery service and defendant's coffee shops). Such an interpretation would render the TAA virtually meaningless."
  • A mark may have acquired sufficient public recognition and renown to demonstrate that it is a strong mark for likelihood of confusion purposes without meeting the stringent requirements to establish that it is a famous mark for dilution purposes.
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • A mark may have acquired sufficient public recognition and renown to demonstrate that it is a strong mark for likelihood of confusion purposes without meeting the stringent requirements to establish that it is a famous mark for dilution purposes. Toro Co. v. ToroHead Inc., supra at 1170.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • A mark may have acquired sufficient public recognition and renown to demonstrate that it is a strong mark for likelihood of confusion purposes without meeting the stringent requirements to establish that it is a famous mark for dilution purposes. I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 47, 49 USPQ2d 1225, 1239 (1st Cir. 1998) ("[T]he standard for fame and distinctiveness required to obtain anti-dilution protection is more rigorous than that required to seek infringement protection").
  • In a use-based application, the party alleging fame must show that the mark had become famous prior to the applicant's use of the mark.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • FOOTNOTE 9 "In a use-based application under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), the party alleging fame must show that the mark had become famous prior to the applicant's use of the mark."
  • The FTDA provides for injunctions against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • The FTDA provides for injunctions against "another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous." 15 U.S.C. § 1125(c)(1). The constructive use provisions of the Trademark Act establish that: "Contingent on the registration of a mark on the principal register provided by this Act, the filing of the application to register shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect ... against any other person except for a person ... who, prior to such filing (1) has used the mark." 15 U.S.C. § 1057(c).
  • To harmonize the constructive use provisions with the Board's authority to resolve dilution issues, it would appear that an owner of an allegedly famous mark would have to show fame prior to the constructive use date; otherwise the intent-to-use provisions would lose much of their value.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • To harmonize the constructive use provisions with the Board's authority to resolve dilution issues, it would appear that an owner of an allegedly famous mark would have to show fame prior to the constructive use date; otherwise the intent-to-use provisions would lose much of their value. Accord WarnerVision Entertainment, Inc. v. Empire Of Carolina Inc., 101 F.3d 259, 262, 40 USPQ2d 1855, 1857 (2d Cir. 1996)("[A]s long as an ITU applicant's privilege has not expired, a court may not enjoin it from making the use necessary for registration on the grounds that another party has used the mark subsequent to the filing of the ITU application. To permit such an injunction would eviscerate the ITU provisions and defeat their very purpose").
  • If an owner of a mark that was not famous prior to an intent-to-use application's filing date could bring a dilution claim, it would undermine the purposes of the Federal Trademark Law Revision Act of 1988.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • In the same way, if an owner of a mark that was not famous prior to an intent-to-use application's filing date could bring a dilution claim, it would undermine the purposes of the Federal Trademark Law Revision Act of 1988 (TLRA). The purposes of the intent-to- use amendments to the Trademark Act were (1) to harmonize United States practice with foreign practice by permitting U.S. applicants to obtain a determination of the registrability of their marks without expending the energy and resources needed to begin using the mark, and (2) to eliminate the token use practice that had developed because of the use requirements of American trademark law. See S. REP. No. 101-515, 100th Cong., 2d Sess. (1988) set out in 6 McCarthy on Trademarks and Unfair Competition (4th ed.): "This disparity between U.S. law and that of most other countries results in foreign applicants having an advantage over U.S. applicants in obtaining trademark registration rights. (p. App. A5-8). The Lanham Act's pre-application use requirement also creates unnecessary legal uncertainties for a U.S. business planning to introduce products or services into the marketplace. It simply has no assurance that after selecting and adopting a mark, and possibly making a sizeable investment in packaging, advertising and marketing, it will not learn that its use of the mark infringes the rights another acquired through earlier use. (p. App. A5-9). Token use is a contrived and commercially transparent practice, nothing more than a legal fiction .... [T]oken use becomes unnecessary and inappropriate under the intent-to-use application system. (pp. App. A5-9, A5-10)."
  • If intent-to-use applications do not receive the benefit of their constructive use date for purposes of dilution, applicants will be discouraged from filing intent-to-use applications and encouraged to make token use of their marks to protect them from non-famous marks that acquire fame while their applications are pending.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • If intent-to-use applications do not receive the benefit of their constructive use date for purposes of dilution, applicants will be discouraged from filing intent-to-use applications and encouraged to make token use of their marks to protect them from non-famous marks that acquire fame while their applications are pending.
  • The FTDA has set out a nonexclusive list of factors that should be considered when determining whether a mark is famous and, thus, is the type of mark for which a claim of dilution is possible.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • The FTDA has set out a nonexclusive list of factors that should be considered when determining whether a mark is famous and, thus, is the type of mark for which a claim of dilution is possible.
  • The TTAB applys a rigorous test to determine the fame and distinctiveness of a mark.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • We apply a rigorous test to determine the fame and distinctiveness of a mark. Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 876, 51 USPQ2d 1801, 1806 (9th Cir. 1999), quoting, S. REP. No. 100-515, at 42 (FTDA applies ‘only to those marks which are both truly distinctive and famous'").
  • The non-exclusive elements for determining whether a mark is distinctive and famouse.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • "In determining whether a mark is distinctive and famous, a court may consider factors such as, but not limited to, (A) the degree of inherent or acquired distinctiveness of the mark; (B) the duration and extent of use of the mark in connection with the goods or services with which the mark is used; (C) the duration and extent of advertising and publicity of the mark; (D) the geographical extent of the trading area in which the mark is used; (E) the channels of trade for the goods or services with which the mark is used; (F) the degree of recognition of the mark in the trading areas and channels of trade used by the mark's owner and the person against whom the injunction is sought; (G) the nature and extent of use of the same or similar marks by third parties; and (H) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register." 15 U.S.C. § 1125(c)(1).
  • Courts have uniformly held that to be capable of being diluted, a mark must have a degree of distinctiveness and "strength" beyond that needed to serve as a trademark.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Here, we look at the degree to which a mark alleged to be famous is distinctive. This requires us to look at how "unique" the term is to the public. The simple distinctiveness under Section 2(f) required for registration on the Principal Register is not the test for whether a mark is distinctive and a famous mark under § 43(c). Avery Dennison, 189 F.3d at 877, 51 USPQ2d at 1807; Washington Speakers Bureau Inc. v. Leading Authorities Inc., 33 F. Supp.2d 488, 502, 49 USPQ2d 1893, 1905 (E.D. Va. 1999) ("[C]ourts have uniformly held that to be capable of being diluted, a mark must have a degree of distinctiveness and ‘strength' beyond that needed to serve as a trademark") (citation and interior quotes omitted), aff'd without published opinion, 217 F.3d 843 (4th Cir. 2000).
  • The degree to which a mark alleged to be famous is distinctive is established by looking at how "unique" the term is to the public.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Here, we look at the degree to which a mark alleged to be famous is distinctive. This requires us to look at how "unique" the term is to the public. The simple distinctiveness under Section 2(f) required for registration on the Principal Register is not the test for whether a mark is distinctive and a famous mark under § 43(c). Avery Dennison, 189 F.3d at 877, 51 USPQ2d at 1807; Washington Speakers Bureau Inc. v. Leading Authorities Inc., 33 F. Supp.2d 488, 502, 49 USPQ2d 1893, 1905 (E.D. Va. 1999) ("[C]ourts have uniformly held that to be capable of being diluted, a mark must have a degree of distinctiveness and ‘strength' beyond that needed to serve as a trademark") (citation and interior quotes omitted), aff'd without published opinion, 217 F.3d 843 (4th Cir. 2000).
  • The simple distinctiveness under Section 2(f) required for registration on the Principal Register is not the test for whether a mark is distinctive and a famous mark under § 43(c).
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • The simple distinctiveness under Section 2(f) required for registration on the Principal Register is not the test for whether a mark is distinctive and a famous mark under § 43(c). Avery Dennison, 189 F.3d at 877, 51 USPQ2d at 1807; Washington Speakers Bureau Inc. v. Leading Authorities Inc., 33 F. Supp.2d 488, 502, 49 USPQ2d 1893, 1905 (E.D. Va. 1999) ("[C]ourts have uniformly held that to be capable of being diluted, a mark must have a degree of distinctiveness and ‘strength' beyond that needed to serve as a trademark") (citation and interior quotes omitted), aff'd without published opinion, 217 F.3d 843 (4th Cir. 2000).
  • As the distinctiveness of the mark is the quality that the statute endeavors to protect, the more distinctiveness the mark possesses, the greater the interest to be protected.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • "…As the distinctiveness of the mark is the quality that the statute endeavors to protect, the more distinctiveness the mark possesses, the greater the interest to be protected." Nabisco, 191 F.3d at 217, 51 USPQ2d at 1888.
  • Distinctive ness is both a statutory element and has considerable bearing on the question whether the junior use will have a diluting effect.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • "[D]istinctiveness plays a dual role. First, as discussed above, it is a statutory element. A mark cannot qualify for protection unless it is distinctive. Second, the degree of distinctiveness of the senior mark has a considerable bearing on the question whether the junior use will have a diluting effect. As the distinctiveness of the mark is the quality that the statute endeavors to protect, the more distinctiveness the mark possesses, the greater the interest to be protected." Nabisco, 191 F.3d at 217, 51 USPQ2d at 1888.
  • Distinctiveness and fame are separate concepts.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • While we agree with those courts that hold that the term "distinctive" is not a synonym for the word "famous"11, it does not appear that the outcome of those dilution cases turned on the courts' considering distinctiveness to be a separate factor. Therefore, our decision to find that distinctiveness and fame are separate concepts is based on the ordinary rules of statutory construction that require us to presume that Congress did not use redundant language in legislation, and that we should attempt to give meaning to all the language Congress used. Platt v. Union Pacific Railroad, 99 U.S. 48, 58 (1878) (Legislature is presumed to have "used no superfluous words"); Bailey v. United States, 516 U.S. 137, 146 (1995) ("We assume that Congress used two terms because it intended each term to have a particular, non-superfluous meaning"). That is particularly the case here where the words do seem to have non-identical meanings.

        FOOTNOTE 11 "Other courts have found it is not a separate requirement. Times Mirror Magazines Inc. v. Las Vegas Sports News L.L.C., 212 F.3d 157, 167, 54 USPQ2d 1577, 1584 (3rd Cir. 2000) ("[W]e are not persuaded that a mark be subject to separate tests for fame and distinctiveness")."

  • To be vulnerable to dilution, a mark must be not only famous, but also so distinctive that the public would associate the term with the owner of the famous mark even when it encounters the term apart from the owner's goods or services, i.e., devoid of its trademark context.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Such an interpretation of the statute makes sense. To be vulnerable to dilution, a mark must be not only famous, but also so distinctive that the public would associate the term with the owner of the famous mark even when it encounters the term apart from the owner's goods or services, i.e., devoid of its trademark context. H.R. REP. No. 104-374, at 3 (1995) ("the mark signifies something unique, singular, or particular").
  • Courts have indicated that a mark can be famous but not particularly distinctive.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Also, courts have indicated that a mark can be famous but not particularly distinctive. See, e.g., Sporty's Farm L.L.C. v. Sportsman's Market Inc., 202 F.3d 489, 497, 53 USPQ2d 1570, 1576 (2d Cir. 2000) ("[E]ven a famous mark may be so ordinary, or descriptive as to be notable for its lack of distinctiveness"); TCPIP Holding Co. v. Haar Communications Inc., 244 F.3d 88, 96, 57 USPQ2d 1971, 1975 (2d Cir. 2001) (footnote omitted) ("Some of the holders of these inherently weak marks are huge companies; as a function of their commercial dominance their marks have become famous. It seems unlikely that Congress could have intended that the holders of such non-distinctive marks would be entitled to exclusivity for them throughout all areas of commerce").
  • A mark can be a famous mark in a particular field but not be distinctive outside that field.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Also, a mark can be a famous mark in a particular field but not be distinctive outside that field. If the same mark is used by others on a wide variety of unrelated products, the mark may be famous for a particular item but not very distinctive. See Syndicate Sales, 192 F.3d at 640, 52 USPQ2d at 1041 ("For example, a mark may be highly distinctive among purchasers of a particular type of product").
  • The more tenuous the connection between the mark by itself and a single source, the less likely that the mark is truly famous and distinctive.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Thus, the more tenuous the connection between the mark by itself and a single source, the less likely that the mark is truly famous and distinctive.
  • If the owner of a mark claiming dilution cannot establish a direct and immediate connection between the mark and itself because the mark is not very distinctive, the less likely dilution can be proven.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • If the owner of a mark claiming dilution cannot establish a direct and immediate connection between the mark and itself because the mark is not very distinctive, the less likely dilution can be proven. The mark CLUE may have significant recognition and renown to the extent that purchasers of board games would be very familiar with it. But it was found to be not very distinctive in the marketplace in general. Hasbro, 66 F. Supp.2d at 131, 52 USPQ2d at 1413 ("Clue" found to be a common word with many meanings and "defendant's use of the word ‘clue' is entirely consistent with the common usage of the word").
  • Discussion of the overlapping concepts of fame and distinctiveness.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Thus, we view fame and distinctiveness as two overlapping, but slightly different, concepts. Since marks can be famous in a particular area as well as across a broad spectrum, we look to the degree of distinctiveness to determine the degree of fame. If a term has achieved fame, but the evidence of distinctiveness indicates that there are numerous other uses of the term, the fame of the mark may be limited. Hasbro, 66 F. Supp.2d at 132, 52 USPQ2d at 1413-14 ("[M]arks consisting of relatively common terms and with use of the same terms by third parties ... not sufficiently famous to warrant FTDA protection"). Therefore, in addition to looking at whether a mark is inherently distinctive, we will also look at the degree of distinctiveness a mark alleged to be famous has acquired. See Citigroup Inc. v. City Holding Co., No. 99 Civ. 10115, 2001 U.S. Dist. LEXIS 17653, at *20 (S.D.N.Y. November 1, 2001) ("In addition to inherent distinctiveness, the CITI family of marks has, through extensive advertising and promotion over the decades, garnered extraordinary acquired distinctiveness").
  • The fact that a mark is registered on the Principal Register would favor the party claiming that the mark is famous. Failure to register may be a factor counted against a party claiming that the mark is famous.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • It is registered on the Principal Register without any claim of acquired distinctiveness.12

        FOOTNOTE 12 "The fact that a mark is registered on the Principal Register would favor the party claiming that the mark is famous. Las Vegas Sports News, 212 F.3d at 166, 54 USPQ2d at 1583 (FTDA Fame Factor H). Failure to register may be a factor counted against a party claiming that the mark is famous. Washington Speakers, 33 F. Supp.2d at 504, 49 USPQ2d at 1907."

  • With respect to the duration and extent of use, generally a famous mark will have been in use for some time.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • "With respect to the duration and extent of use, generally a famous mark will have been in use for some time." H.R. REP. No. 104-374, at 7 (1995).
  • Evidence: Opposer's evidence of duration and extent of use and advertising is the type of evidence that would help establish that a mark is a strong mark for likelihood of confusion purposes or to show fame in a niche market, but it is much less persuasive to establish that its mark is truly famous and distinctive and entitled to the broad scope of protection provided by the FTDA.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Opposer's evidence of duration and extent of use and advertising is the type of evidence that would help establish that a mark is a strong mark for likelihood of confusion purposes or to show fame in a niche market, but it is much less persuasive to establish that its mark is truly famous and distinctive and entitled to the broad scope of protection provided by the FTDA.
  • In establishing fame under the FTDA, the TTAB looks at the geographic extent of its trading areas, and its recognition in its trading areas.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • We also look at the geographic extent of its trading areas (FTDA Fame Factor D), and its recognition in its trading areas (Factor F). As to the geographic trading areas, the legislative history points out: "The geographic fame of the mark [Factor D] must extend throughout a substantial portion of the U.S." H.R. REP. No. 104-374, at 7 (1995). It is undisputed in this case that if opposer's mark is famous, it is famous throughout the United States.
  • Case Finding: We conclude that while opposer has established that its mark has achieved some public recognition and renown, the record does not contain the evidence needed to demonstrate that the mark is a member of the "select class of marks, those with such powerful consumer associations that even non-competing uses can impinge on their value.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • We conclude that while opposer has established that its mark has achieved some public recognition and renown, the record does not contain the evidence needed to demonstrate that the mark is a member of the "select class of marks, those with such powerful consumer associations that even non-competing uses can impinge on their value." Avery Dennison, 189 F.3d at 875, 51 USPQ2d at 1805.
  • Evidence: Fame for FTDA purposes cannot be shown with general advertising and sales figures and unsupported assertions of fame by the party.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Fame for FTDA purposes cannot be shown with general advertising and sales figures and unsupported assertions of fame by the party. "Avery Dennison argues that evidence of extensive advertising and sales, international operations, and consumer awareness suffices to establish fame. We agree that the remaining four statutory factors in the famousness inquiry support Avery Dennison's position. Both "Avery" and "Dennison" have been used as trademarks for large fractions of a century and registered for decades. Avery Dennison expends substantial sums annually advertising each mark with some presumable degree of success due to Avery Dennison's significant volume of sales. In addition, Avery Dennison markets its goods internationally. See 15 U.S.C. Section 1125(c)(B)- (D), (G). However, we disagree that Avery Dennison's showing establishes fame." Avery Dennison, 189 F.3d at 878-79, 51 USPQ2d at 1808. See also In re Pennzoil Products Co., 20 USPQ2d 1753, 1760 (TTAB 1991) (No link established between substantial sales and advertising figures and public recognition of the trademark significance of the applicant's mark).
  • While the eight statutory factors are a guide to determine whether a mark is famous, ultimately the TTAB must consider all the evidence to determine whether opposer has met its burden in demonstrating that the relevant public recognizes the mark as "signifying something unique, singular, or particular."
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • While the eight statutory factors are a guide to determine whether a mark is famous, ultimately we must consider all the evidence to determine whether opposer has met its burden in demonstrating that the relevant public recognizes the TORO mark as "signifying something unique, singular, or particular." H.R. REP. No. 104-374, at 3 (1995).
  • Because famous marks can be diluted by the use of similar marks on non-competitive goods and services, the owner of a famous mark must show that there is a powerful consumer association between the term and the owner.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Because famous marks can be diluted by the use of similar marks on non-competitive goods and services, the owner of a famous mark must show that there is a powerful consumer association between the term and the owner.
  • In likelihood of confusion cases, a party asserting that its mark is strong frequently introduces evidence of its efforts and expenditures in promoting its products. This type of evidence is often persuasive in those cases to demonstrate that the mark has acquired public recognition and renown. In a dilution case, this would only be the beginning of establishing that the mark is famous. Parties claiming their marks are famous must establish conclusively that the advertising has succeeded.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • In likelihood of confusion cases, a party asserting that its mark is strong frequently introduces evidence of its efforts and expenditures in promoting its products. This type of evidence is often persuasive in those cases to demonstrate that the mark has acquired public recognition and renown. In a dilution case, this would only be the beginning of establishing that the mark is famous. Parties claiming their marks are famous must establish conclusively that the advertising has succeeded.
  • Evidence: The TTAB cannot find that relevant purchasers immediately associate the term with opposer and, therefore, cannot find that it is a famous mark among the general public with only evidence of the type of television ads and brochures produced and the amount of money recently spent on advertising, and no evidence of how the relevant purchasers view the term.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Here, opposer has submitted evidence of the type of television ads and brochures that it has produced and the amount of money it has recently spent on advertising, but we have no evidence of how the relevant purchasers view the term. Because of the lack of such evidence, we cannot find that relevant purchasers immediately associate the term TORO with opposer and, therefore, we cannot find that it is a famous mark among the general public. See, e.g., I.P. Lund, 163 F.3d at 47, 49 USPQ2d at 1240 (Faucet design was not famous, despite being featured and advertised in national magazines and displayed in museums).
  • Case Finding: An owner of an allegedly famous mark had spent tens of millions of dollars advertising its mark, but the evidence does not tell when expended or how effectively. Nor did the owner submit, consumer surveys, press accounts, or other evidence of fame.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • The Second Circuit noted that an owner of an allegedly famous mark had "spent ‘tens of millions of dollars' advertising its mark, but [it] does not tell ... when expended or how effectively. Nor did [it] submit, consumer surveys, press accounts, or other evidence of fame." TCPIP Holding, 244 F.3d at 99, 57 USPQ2d at 1978.
  • Fame for dilution purposes is difficult to prove.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Fame for dilution purposes is difficult to prove. Advantage Rent-A-Car, 238 F.3d at 381, 57 USPQ2d at 1563 ("Enterprise did not prove that its slogan [WE'LL PICK YOU UP] was sufficiently ‘famous,' even within the car rental market").
  • The party claiming dilution must demonstrate by the evidence that its mark is truly famous.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • The party claiming dilution must demonstrate by the evidence that its mark is truly famous. I.P. Lund, 163 F.3d at 48, 49 USPQ2d at 1227.
  • Discussion of the establishment of a famous mark under the FTDA as compared to traditional trademark law.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • In effect, an owner of a famous mark is attempting to demonstrate that the English language has changed. Words can be common nouns or proper nouns, such as geographic terms or surnames. Occasionally, new words are added to the English language. Traditionally, multiple uses of a term as a trademark can co-exist when used for nonrelated goods and/or services. This is a bedrock principle of trademark law. With the advent of the FTDA, this traditional balance has been upset. Now, the owner of a famous mark can prohibit the use or registration of the same or substantially similar mark even on unrelated goods and/or services. However, to accomplish this successfully, the mark's owner must demonstrate that the common or proper noun uses of the term and third-party uses of the mark are now eclipsed by the owner's use of the mark. What was once a common noun, a surname, a simple trademark, etc., is now a term the public primarily associates with the famous mark. To achieve this level of fame and distinctiveness, the party must demonstrate that the mark has become the principal meaning of the word.16
        FOOTNOTE 16 "We do not attempt to fix a percentage that would establish that a mark is famous and distinctive. See Las Vegas Sports News, 212 F.3d at 175, 54 USPQ2d at 1590 (Barry, J., dissenting) (discussing attempts by commentators to fix a specific percentage cutoff for consumer recognition)."
  • An opposer relying on the FTDA to provide the broadest protection for its mark against totally unrelated goods must provide evidence that when the public encounters opposer's mark in almost any context, it associates the term, at least initially, with the mark's owner. If this were not the case, then almost any fanciful mark could easily show fame because, by definition, it is a new word, even if few people recognize it.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Therefore, an opposer relying on the FTDA to provide the broadest protection for its mark against totally unrelated goods, as in this case, must provide evidence that when the public encounters opposer's mark in almost any context, it associates the term, at least initially, with the mark's owner. If this were not the case, then almost any fanciful mark could easily show fame because, by definition, it is a new word, even if few people recognize it. While it may be easier for a fanciful mark to crowd out other uses, it still must be shown to be famous and distinctive. Eli Lilly & Co. v. Natural Answers Inc., 233 F.3d 456, 466, 56 USPQ2d 1942, 1949 (7th Cir. 2000)("The strongest protection is reserved for fanciful marks that are purely the product of imagination and have no logical association with the product").
  • Evidence: Examples of evidence that show the transformation of a term into a truly famous mark.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Examples of evidence that show the transformation of a term into a truly famous mark include: 1. Recognition by the other party. Federal Express, 201 F.3d at 177, 53 USPQ2d at 1346. 2. Intense media attention. Eli Lilly, 233 F.3d at 459 and 469, 56 USPQ2d at 1943 and 1951 (PROZAC appearing twice on the cover of Newsweek; identified in Fortune magazine as one of the top six "health and grooming products of the 20th century," subject of two bestsellers and television news and talk shows). 3. Surveys. Grupo Gigante S.A. de C.V. v. Dallo & Co., 119 F. Supp.2d 1083, 1099 (C.D. Cal. 2000) (Survey considered, but not persuasive).
  • The questions of fame and dilution are heavily fact-dependent.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • FOOTNOTE 17 "In all these cases, the questions of fame and dilution are heavily fact-dependent. Even evidence that one out of every seven households in the United States was a customer of the owner of the mark and that millions of additional households had been solicited did not result in a finding that plaintiff's CITI marks were diluted by defendant's CITY mark. Citigroup, 2001 U.S. Dist. LEXIS 17653, at *26."
  • Case Finding: With respect to consumer products and services, the fact that a party's mark may have achieved fame for those particular goods and services does not establish that the mark has achieved a general fame.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • With respect to consumer products and services, the fact that a party's mark may have achieved fame for those particular goods and services does not establish that the mark has achieved a general fame.
  • Merely providing evidence that a mark is a top-selling brand is insufficient to show this general fame without evidence of how many persons are purchasers.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Merely providing evidence that a mark is a top-selling brand is insufficient to show this general fame without evidence of how many persons are purchasers.17
  • Niche market fame in specialized markets can cause dilution.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • However, courts have come to recognize that fame in specialized markets can cause dilution. This has become known as "niche" market fame. Las Vegas Sports News, 212 F.3d at 164, 54 USPQ2d at 1581 (quoting Restatement (Third) of Unfair Competition, § 25, comment e (1995)) ("A mark that is highly distinctive only to a select class or group of purchasers may be protected from diluting uses directed at that particular class or group"); Washington Speakers, 33 F. Supp.2d at 503, 49 USPQ2d at 1906) ("[T]he language of the FTDA itself lends some support to the idea that marks famous in niche markets can be protected from diluting uses directed at the same narrow market").
  • Case Finding: For purposes of discussion, the TTAB accepted, without deciding, the proposition that fame in a niche market is a proper basis for alleging dilution under the FTDA.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • For the purpose of this discussion, we accept, without deciding, the proposition that fame in a niche market is a proper basis for alleging dilution under the FTDA. With niche market fame, a mark may achieve extraordinary fame in a particular field so that nearly everyone in that field recognizes the mark in the abstract, that is, divorced from its associated goods or services. If another party uses the mark on unrelated or related products marketed in the same field, dilution may be possible.
  • The TTAB will not consider whether the mark has niche market fame unless the party alleging fame has demonstrated the trading fields overlap.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • We have no doubt that if this opposer (or almost any opposer for that matter) defined its market narrowly enough, it would eventually be able to show fame in some limited market. However, we will not consider whether the mark has niche market fame unless the party alleging fame has demonstrated the trading fields overlap. Here, opposer has not done this.
  • Under the FTDA, dilution occurs when the capacity of a famous mark to distinguish goods and services is lessened.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Under the FTDA, dilution occurs when the capacity of a famous mark to distinguish goods and services is lessened. 15 U.S.C. § 1127.
  • Dilution applies when the unauthorized use of a famous mark reduces the public's perception that the mark signifies something unique, singular, or particular.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • "It applies when the unauthorized use of a famous mark reduces the public's perception that the mark signifies something unique, singular, or particular." H.R. REP. No. 104-374, at 3 (1995). Dilution diminishes the "selling power that a distinctive mark or name with favorable associations has engendered for a product in the mind of the consuming public." Sally Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621, 624-25, 217 USPQ 658, 661 (2d Cir. 1983).
  • Dilution can occur through blurring or tarnishment.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • "Dilution can occur through blurring or tarnishment. Tarnishment and blurring have emerged as the two main ways by which federal courts have found dilution .... Blurring occurs when one or more identical or similar marks are used on dissimilar products without authorization so that the distinctiveness of the famous mark is eroded." H.R. REP. No. 106-250, at 5 (1999).
  • Blurring protects trademark owners from the erosion of distinctiveness and prestige of a trademark caused by the sale of other goods or services under the same name or simply a proliferation of borrowings that, while not degrading the original seller's mark, are so numerous as to deprive the mark of its distinctiveness and hence impact.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Courts have noted that blurring protects trademark owners from: "The erosion of distinctiveness and prestige of a trademark caused by the sale of other goods or services under the same name ... or simply a proliferation of borrowings that, while not degrading the original seller's mark, are so numerous as to deprive the mark of its distinctiveness and hence impact." Illinois High School Association v. GTE Vantage, 99 F.3d 244, 247, 40 USPQ2d 1633, 1635 (7th Cir. 1996) (dicta) (parenthetical omitted).
  • Dilution occurs when consumers associate a famous mark that has traditionally identified the mark holder's goods with a new and different source.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • "Dilution occurs when consumers associate a famous mark that has traditionally identified the mark holder's goods with a new and different source." Luigino's, Inc. v. Stouffer Corp., 170 F.3d 827, 832, 50 USPQ2d 1047, 1051 (8th Cir. 1999).
  • Blurring occurs when a substantial percentage of consumers, upon seeing the junior party's use of a mark on its goods, are immediately reminded of the famous mark and associate the junior party's use with the owner of the famous mark, even if they do not believe that the goods come from the famous mark's owner.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Therefore, blurring occurs when a substantial percentage of consumers, upon seeing the junior party's use of a mark on its goods, are immediately reminded of the famous mark and associate the junior party's use with the owner of the famous mark, even if they do not believe that the goods come from the famous mark's owner.
  • The test for blurring is not the same as for determining whether two marks are confusingly similar for likelihood of confusion purposes.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • The test for blurring is not the same as for determining whether two marks are confusingly similar for likelihood of confusion purposes. "To support an action for dilution by blurring, ‘the marks must be similar enough that a significant segment of the target group sees the two marks as essentially the same.'" Luigino's, Inc., 170 F.3d at 832, 50 USPQ2d at 1051) (quoting 2 McCarthy on Trademarks and Unfair Competition, § 24:90.1 (4th ed. 1998). Therefore, differences between the marks are often significant. Mead Data (LEXUS for cars did not dilute LEXIS for database services).
  • Even if the mark were famous, there is still the final key factor: whether target customers are likely to associate two different products with the mark, even if they are not confused as to the different origins of these products.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Even if the mark were famous, there is still the final key factor: whether target customers are likely to associate two different products with the mark, even if they are not confused as to the different origins of these products. Hasbro, 66 F. Supp.2d at 136, 52 USPQ2d at 1417.
  • To show that a mark is more than a simple trademark, there must be some evidence that the potential purchasers link the two marks in their minds even if it is simply to speculate as to why the other party should be able to use the famous mark of another.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • To show that a mark is more than a simple trademark, there must be some evidence that the potential purchasers link the two marks in their minds even if it is simply to speculate as to why the other party should be able to use the famous mark of another.
  • An opposer pursuing a dilution claim must establish that its mark became famous prior to the filing date of the applicant's application.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • In Toro, the Board held that an opposer pursuing a dilution claim must establish that its mark became famous prior to the filing date of the applicant's application. Toro, 61 USPQ2d at 1174.
    • Enterprise Rent-A-Car Company v. Advantage Rent-A-Car, Inc., Opposition No. 120,101, (TTAB 2002).
      • More importantly, however, opposer's argument is too late, because a party seeking to invoke dilution as a ground for cancellation must establish that its mark became famous prior to applicant's first use of the mark. Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1174 n. 9 (TTAB 2001). As noted in the Fifth Circuit's opinion, applicant has used the mark since at least as early as 1990. 57 USPQ2d at 1562. Since opposer could not show in district court that its mark was ever distinctive and famous, the question of whether opposer's mark has achieved fame since the earlier trial is irrelevant.
  • Establishing fame for dilution purposes is a more rigorous endeavor than establishing fame for a Section 2(d) likelihood of confusion analysis.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007).
      • We note that fame for likelihood of confusion purposes and for dilution are not the same, and that fame for dilution purposes requires a more stringent showing. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005); Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1170 (TTAB 2001).
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007).
      • A mark, therefore, may have acquired sufficient public recognition and renown to be famous for purposes of likelihood of confusion without meeting the more stringent requirement for dilution fame. Toro Co. v. ToroHead Inc., supra, citing I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 47 USPQ2d 1225, 1239 (1st Cir. 1998)("[T]he standard for fame and distinctiveness required to obtain anti-dilution protection is more rigorous than that required to seek infringement protection").
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • In addition, the Board stated that establishing fame for dilution purposes is a more rigorous endeavor than establishing fame for a Section 2(d) likelihood of confusion analysis. Toro, 61 USPQ2d at 1180-81.
  • Evidence: Evidence of widespread recognition of a term is required of a dilution plaintiff.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • In particular, regarding this second point, the Board held that evidence of widespread recognition of a term is required of a dilution plaintiff. Id. (listing recognition of fame by the other party, intense media attention, and surveys as examples of evidence sufficient to show FTDA fame).
  • For purposes of dilution, a party must prove more than confusing similarity; it must show that the marks are "identical or very substantially similar.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • For purposes of dilution, a party must prove more than confusing similarity; it must show that the marks are "identical or very substantially similar." Carefirst of Maryland Inc. v. FirstHealth of the Carolinas Inc., supra, 77 USPQ2d at 1514, quoting Toro Co. v. ToroHead, Inc., supra, 61 USPQ2d at 1183.
  • Discussion of establishing that a mark is famous.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • ""In Toro, we described the requirements for proving that a mark is famous:
        ""While the eight statutory factors are a guide to determine whether a mark is famous, ultimately we must consider all the evidence to determine whether opposer has met its burden in demonstrating that the relevant public recognizes the {BIG GULP} mark as "signifying something unique, singular, or particular." H.R. REP. No. 104-374, at 3 (1995). Because famous marks can be diluted by the use of similar marks on non-competitive goods and services, the owner of a famous mark must show that there is a powerful consumer association between the term and the owner."
        * * * *
        Fame for dilution purposes is difficult to prove.
        * * * *
        Therefore, an opposer . . . must provide evidence that when the public encounters opposer's mark in almost any context, it associates the term, at least initially with the mark's owner. . . . Examples of evidence that show the transformation of a term into a truly famous mark include:
        1. Recognition by the other party.
        2. Intense media attention.
        3. Surveys.
        * * * *
        But in order to prevail on the ground of dilution the owner of a mark alleged to be famous must show a change has occurred in the public's perception of the term such that it is now primarily associated with the owner of the mark even when it is considered outside of the context of the owner's goods or services."" Toro Co. v. ToroHead Inc., supra, 61 USPQ2d at 1180-1181 (internal citations omitted)."
  • Dilution diminishes the ‘selling power that a distinctive mark or name with favorable associations has engendered for a product in the mind of the consuming public.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • "Dilution diminishes the ‘selling power that a distinctive mark or name with favorable associations has engendered for a product in the mind of the consuming public.'" Toro Co. v. ToroHead Inc., supra, 61 USPQ2d at 1182, quoting Sally Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621, 624-25, 217 UPSQ 658, 661 (2nd Cir. 1983).
  • In the context of dilution analysis, opposer's claim of niche market fame not considered in absence of proof that the parties' trading fields overlapped.
    • ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007)
      • Accordingly, we would characterize this renown as niche market fame. Within the academic, research, and education fields, the PROQUEST mark has achieved such a level of fame that nearly everyone in those fields recognizes the mark. That fact certainly assists opposer in this case because applicant intends to use his mark in the same fields. Cf. Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1182 (TTAB 2001) [in the context of dilution analysis, opposer's claim of niche market fame not considered in absence of proof that the parties' trading fields overlapped]; and Berghoff Restaurant Co. v. Washington Forge, Inc., 225 USPQ 603, 609-610 (TTAB 1985) [opposer's proof of fame of its mark within a limited geographic area sufficient to find its mark famous for purposes of the likelihood of confusion analysis, where applicant's goods were marketed in that geographic area].
  • Evidence: It may well be, however, that direct evidence of dilution such as consumer surveys will not be necessary if actual dilution can reliably be proven through circumstantial evidence -- the obvious case is one where the junior and senior marks are identical.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • FOOTNOTE 33 ""It may well be, however, that direct evidence of dilution such as consumer surveys will not be necessary if actual dilution can reliably be proven through circumstantial evidence -- the obvious case is one where the junior and senior marks are identical." Moseley, 65 USPQ2d at 1808."
  • The "distinctive and famous" requirement of Trademark Act § 43(c) is a question to be determined by looking to the factors set out in the statute, not to any other standard such as those used under a particular state's dilution law.
    • Enterprise Rent-A-Car Company v. Advantage Rent-A-Car, Inc., Opposition No. 120,101, (TTAB 2002).
      • Finally, while opposer "strongly disagree[s]" that its mark was not famous at the time of trial,12 it claims that the mark has achieved fame since then. Memorandum in Opposition at 2. Opposer's argument is too little, too late. Too little, because the "distinctive and famous" requirement of Trademark Act § 43(c) is a question to be determined by looking to the factors set out in the statute, not to any other standard such as those used under a particular state's dilution law, which opposer would have us import into the federal dilution statute.
  • Case Finding: BIG GULP is inherently distinctive when used in connection with fountain soft drinks because it implies that one will drink the fountain drinks in big swallows.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • BIG GULP is an inherently distinctive trademark when used in connection with fountain soft drinks. It is suggestive to the extent that it implies that one will drink opposer's products in big swallows. Accordingly, because BIG GULP is suggestive, this is a dilution factor that slightly favors opposer.
  • Evidence: Failure to introduce evidence as to the extent of a third-party's use and promotion of their marks means the TTAB cannot assess whether third-party use has been so widespread as to have had any impact on consumer perceptions.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • While applicant submitted evidence of third-party use of various "Gulp" trademarks, applicant did not introduce any evidence as to the extent of the third-parties' use and promotion of their marks. Without such evidence, we cannot assess whether third-party use has been so widespread as to have had any impact on consumer perceptions. Cf. National Motor Bearing Co. v. James-Pond Clark, 266 F.2d 709, 121 USPQ 515, 517 (CCPA 1959)("evidence of present third party usage . . . indicates a conditioning of the public mind to the common feature, thereby decreasing any likelihood of confusion"); Freedom Federal Savings & Loan Ass'n v. Heritage Federal Savings & Loan Ass'n, 210 USPQ 227, 231 (TTAB 1981)(third party use of marks without more is not probative of the impact that such marks have on consumer perceptions).
  • The opposer must establish that its mark is famous as a prerequisite for its dilution claim. Once the mark is determined to be famous, the TTAB must apply a sliding scale to determine the extent of that protection.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • This Congressionally mandated factor seems redundant in view of the fact that opposer must establish that its mark is famous as a prerequisite for establishing a dilution claim. Nevertheless, it is a factor that we must consider in order to give meaning to the words in the statute. We conclude, therefore, that the degree of recognition of the famous mark requires us to determine the level of fame acquired by the famous mark. In other words, once the mark is determined to be famous as a prerequisite for dilution protection, we must apply a sliding scale to determine the extent of that protection (i.e., the more famous the mark, the more likely there will be an association between the famous mark and the defendant's mark).
  • Burden of Proof: Opposer, as plaintiff in the opposition proceeding, bears the burden of proving, by a preponderance of the evidence, its asserted grounds of (i) priority and likelihood of confusion and (ii) dilution.
    • Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (TTAB 2003).
      • Opposer, as plaintiff in the opposition proceeding, bears the burden of proving, by a preponderance of the evidence, its asserted grounds of (i) priority and likelihood of confusion and (ii) dilution. See Cerveceria Centroamericana, S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989); and Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000).
  • Burden of Proof: In a case involving a civil action under the FTDA, the Court held that a plaintiff must prove actual dilution, not merely a likelihood of dilution.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • In Moseley, a case involving a civil action under the FTDA, the Court held that a plaintiff must prove actual dilution, not merely a likelihood of dilution. Moseley, 65 USPQ2d at 1807.
  • For applications based on Section 44 of the Lanham Act where the applicant has not used the mark in the U.S. or in commerce between a foreign country and the U.S., the TTAB only addresses the opposer's claim of dilution after first determining that it is sufficient for the plaintiff to establish liklihood of dilution rather than actual dilution.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • In this opposition, the involved application is based on Section 44 of the Lanham Act and applicant has not used its mark in the United States or in commerce between Italy and the United States. Accordingly, we can only reach opposer's claim of dilution if we first determine that, in Board proceedings, it is sufficient for a plaintiff to establish likelihood of dilution rather than actual dilution.
  • Even with respect to marks not yet in use and subject to Section 44 of the Lanham Act in a TTAB proceeding, a party that establishes its ownership of a distinctive and famous mark may prevail upon a showing of likelihood of dilution.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • We now extend the holding to this opposition alleging prospective dilution by a mark not yet in use and that is the subject of a Section 44 application.27 Our determination is supported by the Lanham Act. FOOTNOTE 27 "While applicant's involved application is not based on intent to use but, rather, on Section 44 of the Lanham Act, the Section 44 basis requires applicant to have and expressly state its bona fide intention to use its mark in commerce. 15 U.S.C. §§ 1126(d) and (e)."
  • There is a distinction between civil actions and TTAB proceedings and that, in a TTAB proceeding, a plaintiff that establishes its ownership of a distinctive and famous mark may prevail upon a showing of likelihood of dilution.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • We find that there is a distinction to be drawn between civil actions and Board proceedings and that, in a Board proceeding, a plaintiff that establishes its ownership of a distinctive and famous mark may prevail upon a showing of likelihood of dilution. We have already held so in an opposition involving an intent to use application, i.e., a situation in which a plaintiff cannot show actual dilution. See Toro, 61 USPQ2d at 1174 ("an application based on an intent to use the mark in commerce satisfies the commerce requirement of the FTDA for proceedings before the Board.").
  • Congress intended to limit judicial relief under the FTDA to cases where dilution has already occurred but to allow cases involving prospective dilution to be heard by the TTAB.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • Congress, despite the existence and recognition of state dilution statutes that permit relief on a showing of likelihood of dilution, fashioned the FTDA to permit relief for the owner of a famous mark only when it could show the newcomer's mark actually causes dilution. Moseley, 65 USPQ2d 1807. Moreover, when Congress subsequently passed the TAA, it made no change in the "causes dilution" standard applicable in judicial proceedings, yet allowed Board proceedings to be based on a claim that a newcomer's mark "when used would cause dilution." Compare 15 U.S.C. §1125(c)(1) and 15 U.S.C. §1052(f) (emphasis added). Further, the TAA amendment of Section 2(f) of the Lanham Act to allow for dilution claims in Board proceedings specifically refers to Section 13 (oppositions) and Section 14 (cancellations) as the proceedings in which a dilution claim may be raised. Section 13 allows oppositions by any person "who believes that he would be damaged … including as a result of dilution," and Section 14 allows cancellation actions "by any person who believes that he is or will be damaged, including as a result of dilution…" (emphasis added). The inescapable conclusion is that Congress intended to limit judicial relief under the FTDA to cases where dilution has already occurred but to allow cases involving prospective dilution to be heard by the Board.28 We see no holding or statement in Moseley that runs counter to this conclusion. FOOTNOTE 28 "We note, too, that Congress permitted the filing of trademark applications based on intent to use through its passage of the Trademark Law Revision Act of 1988, and that many opposition proceedings involve intent to use applications. See Toro, 61 USPQ2d at 1174."
  • To prevail on its dilution claim, opposer must establish that its mark is not merely famous, but is distinctive.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • To prevail on its dilution claim, opposer must establish that its mark is not merely famous, but is distinctive. Toro, 61 USPQ2d at 1177.
  • Toro explains that the inquiry into distinctiveness does not end merely because opposer's mark is on the Principal Register and was registered without resort to a claim of acquired distinctiveness, because distinctiveness for dilution purposes requires that the famous mark be so distinctive that the public would associate the term with the owner of the famous mark even when it encounters the term apart from the owner's goods or services.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • Having determined that Moseley does not preclude us from deciding opposer's dilution claim, we turn to an assessment of the distinctiveness and fame of opposer's mark. Toro explains that our inquiry into distinctiveness does not end merely because opposer's mark is on the Principal Register and was registered without resort to a claim of acquired distinctiveness, because distinctiveness for dilution purposes requires that the famous mark be "so distinctive that the public would associate the term with the owner of the famous mark even when it encounters the term apart from the owner's goods or services." Toro, 61 USPQ2d at 1177.
  • One factor to consider, in resolving the question whether a plaintiff's mark is distinctive and famous, is the degree of inherent or acquired distinctiveness of the mark.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • The FTDA, made applicable to this opposition by the TAA, provides that one factor to consider, in resolving the question whether a plaintiff's mark is distinctive and famous, is "the degree of inherent or acquired distinctiveness of the mark." 15 U.S.C. §1125(c)(1)(A).
  • The TTAB assumes that a mark with inherent or acquired distinctiveness may be protected under the dilution statute.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • FOOTNOTE 30 "We also note that the Second Circuit, in New York Stock Exchange Inc. v. New York, New York Hotel LLC, __ F.3d __, 62 USPQ2d 1260, 1264-65 (2d Cir. 2002), has reiterated that Circuit's position that relief under the FTDA is available only when the plaintiff's mark is found to be inherently distinctive. The Federal Circuit, our primary reviewing court, has not had occasion to rule on the question of whether a plaintiff bringing a dilution claim in a Board proceeding must own an inherently distinctive mark, or whether it is sufficient if the mark has acquired distinctiveness. Therefore, we proceed on the assumption that a mark with inherent or acquired distinctiveness may be protected under the dilution statute. It is an immaterial point in this case, however, because we find opposer's mark to be inherently distinctive, for reasons discussed herein."
  • The inquiry concerning inherent or acquired distinctiveness is made even when it is undisputed that the plaintiff's mark is validly registered on the Principal Register.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • The inquiry is made even when it is undisputed that the plaintiff's mark is validly registered on the Principal Register. See Toro, supra, wherein the Board considered the degree of inherent or acquired distinctiveness of opposer's mark notwithstanding that it had been registered on the Principal Register without resort to a claim of acquired distinctiveness.
  • It is permissible for a defendant addressing a dilution claim to present arguments regarding the lack of distinctiveness of the plaintiff's mark, even in the absence of a counterclaim for cancellation of the plaintiff's pleaded registration.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • In view of the fact that a plaintiff pursuing a dilution claim in a Board proceeding must, as an element of its claim, prove the distinctiveness of its mark, and that consideration of such issue requires consideration of the degree of inherent or acquired distinctiveness of the mark without regard to the type of registration the plaintiff owns, we hold that it is permissible for a defendant addressing a dilution claim to present arguments regarding the lack of distinctiveness of the plaintiff's mark, even in the absence of a counterclaim for cancellation of the plaintiff's pleaded registration. We do not see how we can prohibit a defendant from presenting arguments on a factor that the statute specifically delineates as relevant to a dilution inquiry.
  • There is no per se rule that acronyms cannot be inherently distinctive.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • Turning to applicant's first argument as to why opposer's mark is not distinctive, i.e., that acronyms per se cannot be inherently distinctive, we note that the authority on which applicant has relied, Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 51 USPQ2d 1882 (2d Cir. 1999), establishes no such per se rule, and we decline to create one.30
  • As each mark must be considered on its own merits, whether another acronym or initialism would be perceived as a non-distinctive abbreviation of a descriptive phrase does not establish that opposer's mark will be perceived as non-distinctive.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • Of course, each mark must be considered on its own merits. Thus, whether another acronym or initialism would be perceived as a non-distinctive abbreviation of a descriptive phrase does not establish that opposer's mark will be perceived as non-distinctive.
  • State dilution statutes provide that tarnishment and blurring are actionable, while FTDA arguably refers only to the latter.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • Our final inquiry regarding whether use of applicant's NASDAQ mark for the identified goods would be likely to cause dilution of opposer's mark is whether blurring would occur, so as to lessen the capacity of opposer's mark to identify its stock market services. Moseley, 65 USPQ2d 1807 (state dilution statutes provide that tarnishment and blurring are actionable, while FTDA arguably refers only to the latter).
  • Dilution theory presumes some kind of mental association in the reasonable buyer's mind.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • "Dilution theory presumes some kind of mental association in the reasonable buyer's mind." Mead Data, 875 F.2d at 1031, 10 USPQ2d at 1966, quoting, 2 McCarthy § 24.13.
  • Dilution can occur between unrelated products regardless of whether there is a likelihood of confusion. However, courts have observed that the closer the products are to one another in the marketplace, the greater the likelihood of both confusion and dilution.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • FOOTNOTE 20 "As both the legislative history and the case law make it clear, dilution can occur between unrelated products regardless of whether there is a likelihood of confusion. However, courts have observed that "the closer the products are to one another [in the marketplace], the greater the likelihood of both confusion and dilution." Las Vegas Sports News, 212 F.3d at 164, 54 USPQ2d at 1581, quoting, Nabisco Brands, 191 F.3d at 222, 51 USPQ2d at 1882.
  • The TTAB will consider geographic limitations only in the context of a concurrent use proceeding.
    • Enterprise Rent-A-Car Company v. Advantage Rent-A-Car, Inc., Opposition No. 120,101, (TTAB 2002).
      • Suffice it to say that we do not find opposer's authorities, all likelihood of confusion cases decided prior to enactment of the FTDA, persuasive support for its theory. Federal registration generally affords the owner rights which are national in scope. See Trademark Act § 7(c). By long-standing policy, the Board will consider geographic limitations only in the context of a concurrent use proceeding, Trademark Rule 2.133(c); TBMP § 1101.02, and cases cited therein, and we see nothing in the FTDA or the TAA which would support a different result.
  • Case Finding: Unless opposer can establish that its mark was famous prior to applicant's use, anywhere in the country, it cannot prevail.
    • Enterprise Rent-A-Car Company v. Advantage Rent-A-Car, Inc., Opposition No. 120,101, (TTAB 2002).
      • Applicant alleges use of the mark as early as 1990. Assuming such use could be proved, whether opposer's mark is famous today is of little relevance. Unless opposer can establish that its mark was famous prior to applicant's use, anywhere in the country, it cannot prevail. On this point, opposer is barred by the federal court's judgment and the doctrine of claim preclusion from attempting to prove its mark was famous prior to 1999.
  • Case Finding: While we have previously found that BIG GULP is a famous mark for dilution purposes, there is insufficient evidence to demonstrate that BIG GULP has acquired an extraordinary degree of recognition relative to other famous marks.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • While we have previously found that BIG GULP is a famous mark for dilution purposes, there is insufficient evidence to demonstrate that BIG GULP has acquired an extraordinary degree of recognition relative to other famous marks. Accordingly, we find that this dilution factor is neutral.
  • "Used" means use of the mark in the United States.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • "Used" means use of the mark in the United States.
  • A mark is famous for purposes of the TDRA 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.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • A mark is famous for purposes of the TDRA 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."3 15 U.S.C. § 1125(c)(2)(A).
  • Absent contrary binding authority, the TTAB reads the TDRA according to its plain meaning and consistent with the purpose behind the Lanham Act.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • We turn then to the requirements of the TDRA. Absent contrary binding authority, we read the TDRA according to its plain meaning and consistent with the purpose behind the Lanham Act.
  • Activity solely outside the United States is ineffective to create or maintain rights in marks within the United States.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • That is, activity solely outside the United States is ineffective to create or maintain rights in marks within the United States. Id.; Stagecoach Properties, Inc. v. Wells Fargo & Company, 199 USPQ 341, 349 (TTAB 1978).
  • Because TTAB proceedings are by their nature limited to issues regarding the registrability of trademarks or service marks, rather than song titles, product reviews, and other non-mark uses, and the involved marks necessarily are used or intended to be used in commerce as indicators of source for goods or services, the "noncommercial use" exception under the TDRA is not applicable as an affirmative defense to a claim of dilution brought under the TDRA in TTAB proceedings.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • In sum, because Board proceedings are by their nature limited to issues regarding the registrability of trademarks or service marks, rather than song titles, product reviews, and other non-mark uses, and the involved marks necessarily are used or intended to be used in commerce as indicators of source for goods or services, the "noncommercial use" exception under the TDRA is not applicable as an affirmative defense to a claim of dilution brought under the TDRA in Board proceedings.
  • Dilution under the TDRA is made available to TTAB opposition proceedings by Section 13(a) of the Trademark Act.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • Dilution under the Trademark Dilution Revision Act ("TDRA"), § 43(c) of the Lanham Act, 15 U.S.C. § 1125(c), is made available to Board opposition proceedings by § 13(a) of the Trademark Act, 15 U.S.C. § 1063.2 FOOTNOTE 2 "Trademark Act § 13 provides that "[a]ny person who believes that he would be damaged by the registration of a mark upon the principal register, including the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may, ... file an opposition . . . .""
  • Generally, a plaintiff asserting a dilution claim will be relying on a mark in use in the United States, for the legislative history of dilution legislation speaks of marks in widespread use.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • FOOTNOTE 4 "Generally, a plaintiff asserting a dilution claim will be relying on a mark in use in the United States, for the legislative history of dilution legislation speaks of marks in widespread use. See H.R. Rep. 104-374, 104th Cong. at 3 (1988), in regard to the FTDA, which preceded the TDRA (" . . . . A federal dilution statute is necessary because famous marks ordinarily are used on a nationwide basis and dilution protection is currently only available on a patch-quilt system of protection, in that only approximately 25 states have laws that prohibit trademark dilution.")."
  • In an unusual case, activity outside the United States related to a mark could potentially result in the mark becoming well-known within the United States, even without any form of activity in the United States.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • We must, however, at least recognize the possibility that, in an unusual case, activity outside the United States related to a mark could potentially result in the mark becoming well-known within the United States, even without any form of activity in the United States.
  • In comparing "well known mark" fame, in the context of likelihood of confusion, and dilution fame, the test of what marks are eligible is different for the two legal doctrines or rules. . . . to invoke the 'well-known' marks doctrine of the Paris Convention, the degree of reputation that is necessary is that the trademark is sufficiently well known in the relevant sector of the public in the U.S. such that this defendant's use is likely to cause confusion. This should not be confused with the very high degree of 'fame' required to qualify a mark as 'famous' in order to invoke the special scope of exclusivity granted by the anti-dilution law.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • FOOTNOTE 3 "In comparing "well known mark" fame, in the context of likelihood of confusion, and dilution fame, one commentator notes that "[t]he test of what marks are eligible is different for the two legal doctrines or rules. . . . to invoke the 'well-known' marks doctrine of the Paris Convention, the degree of reputation that is necessary is that the trademark is sufficiently well known in the relevant sector of the public in the U.S. such that this defendant's use is likely to cause confusion. This should not be confused with the very high degree of 'fame' required to qualify a mark as 'famous' in order to invoke the special scope of exclusivity granted by the anti-dilution law. That is an entirely different matter." 4 J. Thomas McCarthy, 4 McCarthy on Trademarks and Unfair Competition § 29:61 (4th Ed. 2002 and updated 2009). See also Empresa Cubana del Tabaca v. Culbro Corp., 70 USPQ2d 1650, 1692 (S.D.N.Y. 2004), rev'd on other grounds, 399 F.3d 462, 73 USPQ2d 1936 (2d Cir. 2005) (while the "mark was famous within the meaning of the famous marks doctrine . . . it does not meet the considerably more stringent requirements of the FTDA"); Grupo Gigante SA De CV v. Dallo & Co., Inc., 391 F.3d 1088, 1106, 73 USPQ2d 1258, 1271 (9th Cir. 2004); Anne Gilson LaLonde, Don't I Know You From Somewhere" Protection in the United States of Foreign Trademarks that Are Well Known But Not Used There, Vol. 98 Trademark Reporter 1379, 1396 (November-December 2008) ("Under U.S. dilution law, trademarks must be ‘widely recognized by the general consuming public of the United States as a designation of source of the goods"
  • Inasmuch as opposer's dilution claim relies on the alleged fame of a "well known mark" but opposer has not alleged any particular type of use or specific facts which could be proved at trial as demonstrating widespread recognition of its mark in the United States, opposer's dilution claim is insufficient.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • Inasmuch as opposer's dilution claim relies on the alleged fame of a "well known mark" but opposer has not alleged any particular type of use or specific facts which could be proved at trial as demonstrating widespread recognition of its mark in the United States, opposer's dilution claim is insufficient.
  • It makes no sense to dismiss the statutory definition of "mark" as not relevant to the TDRA, and nothing in the TDRA indicates such definition may be ignored in interpreting the extent of protections offered under the TDRA.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • Moreover, it would simply make no sense here to dismiss the statutory definition of "mark" as not relevant to the TDRA, and nothing in the TDRA indicates such definition may be ignored in interpreting the extent of protections offered under the TDRA.
  • One cannot merely allege recognition and fame outside the United States and presume that recognition and fame in the United States follows as a matter of course.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • We note, in this regard, the pleading of such a claim cannot merely allege recognition and fame outside the United States and presume that recognition and fame in the United States follows as a matter of course.
  • Section 43(c) allows an owner of a famous mark to 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.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • Section 43(c) allows an "owner of a famous mark" to 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."
  • Section 43(c) of the TDRA defenses to a dilution claim.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • "Section 43(c) of the TDRA provides defenses to such a claim, as follows: ""(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."" 15 U.S.C. § 1125(c)(3)(C)(emphasis added)."
  • Section 44 of the Lanham Act allows a foreign applicant to obtain a registration in the United States without ever having used the mark in United States commerce. However, once registered, a Section 44(e) registrant is subject to the same national treatment and conditions which prevail in connection with domestic registrations based on use in the United States.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • FOOTNOTE 6 "As noted in Person's, Section 44 of the Lanham Act allows a foreign applicant to obtain a registration in the United States without ever having used the mark in United States commerce. However, once registered, a Section 44(e) registrant is "subject to the same [national] treatment and conditions which prevail in connection with domestic registrations based on use in the United States." Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1393 (Fed. Cir. 1990)."
  • Section 45 defines a "mark" to include any trademark, service mark, collective mark, or certification mark" and which defines each of those types of marks as including marks in use or which are intended to be used and are the subjects of applications for registration.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • See Section 45 which defines a "mark" to include "any trademark, service mark, collective mark, or certification mark" and which defines each of those types of marks as including marks in use or which are intended to be used and are the subjects of applications for registration.4
  • Section 45 of the Lanham Act states that the defined terms have the given meanings when used in the statute unless the contrary is plainly apparent from the context.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • Section 45 of the Lanham Act states that the defined terms have the given meanings when used in the statute "unless the contrary is plainly apparent from the context."
  • Sections 13 and 14 of the Trademark Act permit a party to bring a dilution claim under the TDRA in inter partes proceedings before the TTAB.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • Sections 13 and 14 of the Trademark Act permit a party to bring a dilution claim under the TDRA in inter partes proceedings before the Board. 15 U.S.C. §§ 1063 and 1064.
  • The affirmative defense of "noncommercial use" to a dilution claim is inapplicable.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • We note that the applicability of the "noncommercial use" exception as an affirmative defense to a dilution claim is an issue of first impression before the Board. For the reasons set forth below, the Board finds that the exception is inapplicable in Board dilution cases.
  • The meaning of "use" in this context is not limited to use in commerce, and there are various types of use which, if sufficiently widespread or widely known, might provide support for a dilution claim.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • The meaning of "use" in this context is not limited to use in commerce, and there are various types of use which, if sufficiently widespread or widely known, might provide support for a dilution claim.5 See S. Rep. 100-515 100th Cong. at 44 (1988)(definition reflects that marks can exist at common law or in strictly intrastate use). Cf. First Niagara Insurance Brokers Inc. v. First Niagara Financial Group Inc., 476 F.3d 867, 81 USPQ2d 1375, 1378 (Fed. Cir. 2007) (under Section 2(d), "a foreign opposer can present its opposition on the merits by showing only use of its mark in the United States"); National Cable Television Association Inc. v. American Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1429 (Fed. Cir. 1991) (prior public identification of petitioner with the name ACE for awards from use analogous to service mark usage provides sufficient basis for petitioner to object to registration); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (party may establish its own prior proprietary rights in a mark through ownership of a prior registration, actual use or through use analogous to trademark use, such as use in advertising brochures, trade publications, catalogues, newspaper advertisements and Internet websites which create a public awareness of the designation as a trademark identifying the party as a source); Shalom Children's Wear Inc. v. In-Wear A/S, 26 USPQ2d 1516, 1519 (TTAB 1993) (nontechnical use of a trademark in connection with the promotion or sale of a product has consistently been held sufficient use to establish priority rights against subsequent users of the same or similar marks); Big Blue Products Inc. v. International Business Machines Corp., 19 USPQ2d 1072 (TTAB 1991) (a company may have a protectable property right in a term even if it has not made use of the term, if the public has come to associate the term with the company or its goods or services); American Stock Exchange, Inc. v. American Express Company, 207 USPQ 356, 363 (TTAB 1980) (for purposes of priority, use of a mark in a manner analogous to trademark use, such as use in advertising, use as a grade mark, use as the salient or distinguishing feature of a trade name, use of an acronym or of the initial letters of a corporate name may be considered). Compare Hornby v. TJX Companies Inc., 87 USPQ2d 1411 (TTAB 2008) (petitioner that had abandoned use in the United States of her personal name mark, was unable to prevail on either a likelihood of confusion or dilution claim, but was able to prevail on a claim of false suggestion of a connection with petitioner's persona, due to continuing fame and reputation of petitioner within the United States).
  • The normal rule of statutory construction is that identical words used in different parts of the same act are intended to have the same meaning.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • The "normal rule of statutory construction" is "that identical words used in different parts of the same act are intended to have the same meaning." Sullivan v. Stroop, 496 U.S. 478, 484 (1990) (quoting Sorenson v. Sec'y of Treasury, 475 U.S. 851, 860 (1986)).
  • The requisite extent of a mark's fame, whether derived through use in commerce, intrastate use, use analogous to trademark use, or some other type of activity sufficient to create an association between a mark and a particular source of goods, will vary according to the nature of the claim. For a dilution claim, however, the use or recognition must be widespread for there to be any possibility that the mark's fame in the United States will be sufficient.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • FOOTNOTE 5 "As noted, supra, the requisite extent of a mark's fame, whether derived through use in commerce, intrastate use, use analogous to trademark use, or some other type of activity sufficient to create an association between a mark and a particular source of goods, will vary according to the nature of the claim. For a dilution claim, however, the use or recognition must be widespread for there to be any possibility that the mark's fame in the United States will be sufficient."
  • The statutory definition of "mark" to infuse an understanding of "famous mark" as referenced in the TDRA leaves no doubt that any reference in that act to a "famous mark" is a reference to a mark in use in the United States, or for which there is an intent to use the mark in the United States coupled with an application for registration.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • Utilizing the statutory definition of "mark" to infuse our understanding of "famous mark" as referenced in the TDRA leaves no doubt that any reference in that act to a "famous mark" is a reference to a mark in use in the United States, or for which there is an intent to use the mark in the United States coupled with an application for registration.
  • The TDRA became effective on October 6, 2006, revising the Federal Trademark Dilution Act of 1995, codified at 15 U.S.C. § 1125(c), which had created a new federal cause of action against the dilution of famous marks.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • The TDRA became effective on October 6, 2006, revising the Federal Trademark Dilution Act of 1995 ("FTDA"), codified at 15 U.S.C. § 1125(c), which had created a new federal cause of action against the dilution of famous marks.
  • The TDRA provides a definition of "fame" for purposes of dilution, it does not specifically define the term "mark." For that definition, the TTAB refers to § 45, 15 U.S.C. § 1127 of the Lanham Act.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • While the TDRA provides a definition of "fame" for purposes of dilution, it does not specifically define the term "mark." For that definition, we refer to § 45, 15 U.S.C. § 1127 of the Lanham Act.
  • The TTAB cannot overlook the governing definition in Section 45 of "mark," when assessing applicability of the TDRA, as the TTAB must take into account all relevant parts of the statute.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • Further, the Board cannot overlook the governing definition in Section 45 of "mark," when assessing applicability of the TDRA, as the Board must take into account all relevant parts of the statute. See In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889, 892 (CCPA 1982) (each part or section of a statute should be construed in connection with every other part or section so as to produce a harmonious whole); United States Telecom Ass'n v. FCC, 227 F.3d 450, 463 (D.C. Cir. 2000) (noting "the well-accepted principle of statutory construction that requires every provision of a statute to be given effect").
  • To properly plead a dilution claim, opposer must assert facts that it expects to prove at trial that would demonstrate the recognition and fame of its marks in the United States, however created.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • Rather, to properly plead a dilution claim of this type, opposer must assert facts that it expects to prove at trial that would demonstrate the recognition and fame of its PANDA and FIAT PANDA marks in the United States, however created.
  • We note that a requirement for pleading some type of use or intent to use coupled with the filing of an application, and widespread recognition of the mark in the United States, is consistent with the concept of territoriality, basic to trademark law.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • We note that a requirement for pleading some type of use or intent to use coupled with the filing of an application, and widespread recognition of the mark in the United States, is consistent with the concept of territoriality, basic to trademark law. See Person's Co. Ltd. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1479 (Fed. Cir. 1990)6
  • Where Congress defines what a particular term means, that definition controls to the exclusion of any meaning that is not explicitly stated in the definition.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • Where "Congress defines what a particular term ‘means,' that definition controls to the exclusion of any meaning that is not explicitly stated in the definition." U.S. v. Roberson, 459 F.3d 39, 53 (1st Cir. 2006) citing 1A & 2A Norman J. Singer, Sutherland: Statutes and Statutory Construction, §§ 20:8, 47:07 (6th ed. 2000), which in turn cites Colautti v. Franklin, 439 U.S. 379, 392 n.10 (1979); see also Florida Dep't of Banking & Fin. v. Board of Governors of Fed. Reserve Sys., 800 F.2d 1534, 1536 (11th Cir. 1986) ("It is an elementary precept of statutory construction that the definition of a term in the definitional section of a statute controls the construction of that term wherever it appears throughout the statute.").
  • While Section 43(c) provides a dilution cause of action for the protection of famous unregistered marks, it does not provide a cause of action for famous unregistered marks not in use, in some way, in the United States, in the absence of a specific pleading of intent to use, the filing of an application for registration, and some basis for concluding that recognition of the mark in the United States is sufficiently widespread as to create an association of the mark with particular products or services, even if the source of the same is anonymous and even if the products or services are not available in the United States.
    • Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010)
      • Therefore, while Section 43(c) provides a dilution cause of action for the protection of famous unregistered marks, it does not provide a cause of action for famous unregistered marks not in use, in some way, in the United States, in the absence of a specific pleading of intent to use, the filing of an application for registration, and some basis for concluding that recognition of the mark in the United States is sufficiently widespread as to create an association of the mark with particular products or services, even if the source of the same is anonymous and even if the products or services are not available in the United States.
Fiat Group Automobiles S.p.A. v. ISM, Inc., Opposition No. 91190607 (TTAB 2010) 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007) ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007) Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005) Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (TTAB 2003) The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003) Enterprise Rent-A-Car Company v. Advantage Rent-A-Car, Inc., Opposition No. 120,101, (TTAB 2002) The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001) Grand Total
Giersch v. Scripps Networks Inc., 90 USPQ2d 1020 (TTAB 2009) 1
Hornby v. TJX Companies Inc., 87 USPQ2d 1411 (TTAB 2008) 1
First Niagara Insurance Brokers Inc. v. First Niagara Financial Group Inc., 476 F.3d 867, 81 USPQ2d 1375 (Fed. Cir. 2007) 1
U.S. v. Roberson, 459 F.3d 39 (1st Cir. 2006) 1
Carefirst of Maryland Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492 (TTAB 2005) 1
Palm Bay Import Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005) 1
Empresa Cubana Del Tabaco v. Culbro Corp.,. 70 U.S.P.Q. 2d 1640 (S.D.N.Y. 2004) 1
Grupo Gigante SA De CV v. Dallo & Co., Inc., 391 F.3d 1088, 73 USPQ2d 1258 (9th Cir. 2004) 1
Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car Inc., 330 F.3d 1333, 66 USPQ2d 1811 (Fed. Cir. 2003) 1
Moseley v. V Secret Catalogue Inc., __ U.S. __, 65 USPQ2d 1801 (2003) 1
New York Stock Exchange Inc. v. New York, New York Hotel LLC, __ F.3d __, 62 USPQ2d 1260 (2d Cir. 2002) 1
Advantage Rent-A Car Inc. v. Enterprise Rent-A-Car Co., 238 F.3d 378, 57 USPQ2d 1561 (5th Cir. 2001) 1
Citigroup Inc. v. City Holding Co., No. 99 Civ. 10115, 2001 U.S. Dist. LEXIS 17653 (S.D.N.Y. November 1, 2001) 1
TCPIP Holding Co. v. Haar Communications Inc., 244 F.3d 88, 57 USPQ2d 1971 (2d Cir. 2001) 1
Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001) 4
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000) 1
Eli Lilly & Co. v. Natural Answers Inc., 233 F.3d 456, 56 USPQ2d 1942 (7th Cir. 2000) 1
Federal Express Corp. v. Federal Espresso Inc., 201 F.3d 168, 53 USPQ2d 1345 (2d Cir. 2000) 1
Grupo Gigante S.A. de C.V. v. Dallo & Co., 119 F. Supp.2d 1083 (C.D. Cal. 2000) 1
Jet Inc. v. Sewage Aeration Systems, 223 F.3d 1360, 55 USPQ2d 1854 (Fed. Cir. 2000) 1
Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000) 1
Sporty's Farm L.L.C. v. Sportsman's Market Inc., 202 F.3d 489, 53 USPQ2d 1570 (2d Cir. 2000) 1
Times Mirror Magazines Inc. v. Las Vegas Sports News L.L.C., 212 F.3d 157, 54 USPQ2d 1577 (3rd Cir. 2000) 1
Westchester Media v. PRL USA Holdings Inc., 214 F.3d 658, 55 USPQ2d 1225 (5th Cir. 2000) 1
Washington Speakers Bureau Inc. v. Leading Authorities Inc., 33 F. Supp.2d 488, 49 USPQ2d 1893 (E.D. Va. 1999), aff'd without published opinion, 217 F.3d 843 (4th Cir. 2000) 1
Hasbro Inc. v. Clue Computing Inc., 66 F. Supp.2d 117, 52 USPQ2d 1402 (D. Mass. 1999), aff'd, 232 F.3d 1, 56 USPQ2d 1766 (1st Cir. 2000) 1
United States Telecom Ass'n v. FCC, 227 F.3d 450 (D.C. Cir. 2000) 1
Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 51 USPQ2d 1801 (9th Cir. 1999) 1
Luigino's Inc. v. Stouffer Corp., 170 F.3d 827, 50 USPQ2d 1047 (8th Cir. 1999) 2
Nabisco Inc. v. PF Brands Inc., 191 F.3d 208, 51 USPQ2d 1882 (2d Cir. 1999) 2
Ringling Bros.-Barnum & Bailey Combined Shows Inc. v. Utah Division of Travel and Development, 170 F.3d 449, 50 USPQ2d 1065 (4th Cir. 1999) 1
Syndicate Sales Inc. v. Hampshire Paper Corp., 192 F.3d 633, 52 USPQ2d 1035 (7th Cir. 1999) 1
I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 49 USPQ2d 1225 (1st Cir. 1998) 2
Illinois High School Association v. GTE Vantage, 99 F.3d 244, 247, 40 USPQ2d 1633 (7th Cir. 1996) 1
WarnerVision Entertainment Inc. v. Empire Of Carolina Inc., 101 F.3d 259, 262, 40 USPQ2d 1855 (2d Cir. 1996) 1
Bailey v. United States, 516 U.S. 137 (1995) 1
Levi Strauss & Co. v. R. Josephs Sportwear Inc., 36 USPQ2d 1328 (TTAB 1994) 1
Shalom Children's Wear Inc. v. In-Wear A/S, 26 USPQ2d 1516 (TTAB 1993) 1
Big Blue Products Inc. v. International Business Machines Corp., 19 USPQ2d 1072 (TTAB 1991) 1
In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991) 1
National Cable Television Association Inc. v. American Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424 (Fed. Cir. 1991) 1
Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990) 1
Person's Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477 (Fed. Cir. 1990) 1
Sullivan v. Stroop, 496 U.S. 478 (1990) 1
Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989) 1
Mead Data Central Inc. v. Toyota Motor Sales, U.S.A. Inc., 875 F.2d 1065, 10 USPQ2d 1961 (2nd Cir. 1989) 2
Florida Dep't of Banking & Fin. v. Board of Governors of Fed. Reserve Sys., 800 F.2d 1534 (11th Cir. 1986) 1
Sorenson v. Sec'y of Treasury, 475 U.S. 851 (1986) 1
Berghoff Restaurant Co. v. Washington Forge Inc., 225 USPQ 603 (TTAB 1985) 1
Sally Gee Inc. v. Myra Hogan Inc., 699 F.2d 621, 217 UPSQ 658 (2nd Cir. 1983) 2
In re Nantucket, 677 F.2d 95, 213 USPQ 889 (CCPA 1982) 1
Freedom Federal Savings & Loan Ass'n v. Heritage Federal Savings & Loan Ass'n, 210 USPQ 227 (TTAB 1981) 1
American Stock Exchange Inc. v. American Express Co., 207 USPQ 356 (TTAB 1980) 1
Colautti v. Franklin, 439 U.S. 379 (1979) 1
Stagecoach Properties, Inc. v. Wells Fargo & Company, 199 USPQ 341 (TTAB 1978) 1
National Motor Bearing Co. v. James-Pond Clark, 266 F.2d 709, 121 USPQ 515 (CCPA 1959) 1
Platt v. Union Pacific Railroad, 99 U.S. 48 (1878) 1
Grand Total 19 9 2 3 2 4 2 24 65

Sec. 1052. Trademarks registrable on principal register; concurrent registration

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it--
  1. (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.
  2. (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.
  3. (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
  4. (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.
  5. (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.
  6. (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before December 8, 1993.
A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.

 

 

Sec. 1057. Certificates of registration

  1. (a) Issuance and form
    Certificates of registration of marks registered upon the principal register shall be issued in the name of the United States of America, under the seal of the Patent and Trademark Office, and shall be signed by the Director or have his signature placed thereon, and a record thereof shall be kept in the Patent and Trademark Office. The registration shall reproduce the mark, and state that the mark is registered on the principal register under this chapter, the date of the first use of the mark, the date of the first use of the mark in commerce, the particular goods or services for which it is registered, the number and date of the registration, the term thereof, the date on which the application for registration was received in the Patent and Trademark Office, and any conditions and limitations that may be imposed in the registration.
  2. (b) Certificate as prima facie evidence
    A certificate of registration of a mark upon the principal register provided by this chapter shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate.
  3. (c) Application to register mark considered constructive use
    Contingent on the registration of a mark on the principal register provided by this chapter, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any other person except for a person whose mark has not been abandoned and who, prior to such filing--
    1. (1) has used the mark;
    2. (2) has filed an application to register the mark which is pending or has resulted in registration of the mark; or
    3. (3) has filed a foreign application to register the mark on the basis of which he or she has acquired a right of priority, and timely files an application under section 1126(d) of this title to register the mark which is pending or has resulted in registration of the mark.
  4. (d) Issuance to assignee
    A certificate of registration of a mark may be issued to the assignee of the applicant, but the assignment must first be recorded in the Patent and Trademark Office. In case of change of ownership the Director shall, at the request of the owner and upon a proper showing and the payment of the prescribed fee, issue to such assignee a new certificate of registration of the said mark in the name of such assignee, and for the unexpired part of the original period.
  5. (e) Surrender, cancellation, or amendment by registrant
    Upon application of the registrant the Director may permit any registration to be surrendered for cancellation, and upon cancellation appropriate entry shall be made in the records of the Patent and Trademark Office. Upon application of the registrant and payment of the prescribed fee, the Director for good cause may permit any registration to be amended or to be disclaimed in part: Provided, That the amendment or disclaimer does not alter materially the character of the mark. Appropriate entry shall be made in the records of the Patent and Trademark Office and upon the certificate of registration or, if said certificate is lost or destroyed, upon a certified copy thereof.
  6. (f) Copies of Patent and Trademark Office records as evidence
    Copies of any records, books, papers, or drawings belonging to the Patent and Trademark Office relating to marks, and copies of registrations, when authenticated by the seal of the Patent and Trademark Office and certified by the Director, or in his name by an employee of the Office duly designated by the Director, shall be evidence in all cases wherein the originals would be evidence; and any person making application therefor and paying the prescribed fee shall have such copies.
  7. (g) Correction of Patent and Trademark Office mistake
    Whenever a material mistake in a registration, incurred through the fault of the Patent and Trademark Office, is clearly disclosed by the records of the Office a certificate stating the fact and nature of such mistake, shall be issued without charge and recorded and a printed copy thereof shall be attached to each printed copy of the registration certificate and such corrected registration shall thereafter have the same effect as if the same had been originally issued in such corrected form, or in the discretion of the Director a new certificate of registration may be issued without charge. All certificates of correction heretofore issued in accordance with the rules of the Patent and Trademark Office and the registrations to which they are attached shall have the same force and effect as if such certificates and their issue had been specifically authorized by statute.
  8. (h) Correction of applicant's mistake
    Whenever a mistake has been made in a registration and a showing has been made that such mistake occurred in good faith through the fault of the applicant, the Director is authorized to issue a certificate of correction or, in his discretion, a new certificate upon the payment of the prescribed fee: Provided, That the correction does not involve such changes in the registration as to require republication of the mark.

 

 

Sec. 1063. Opposition to registration

  1. (a) Any person who believes that he would be damaged by the registration of a mark upon the principal register, including the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 1062 of this title of the mark sought to be registered. Upon written request prior to the expiration of the thirty-day period, the time for filing opposition shall be extended for an additional thirty days, and further extensions of time for filing opposition may be granted by the Director for good cause when requested prior to the expiration of an extension. The Director shall notify the applicant of each extension of the time for filing opposition. An opposition may be amended under such conditions as may be prescribed by the Director.
  2. (b) Unless registration is successfully opposed--
    1. (1) a mark entitled to registration on the principal register based on an application filed under section 1051(a) of this title or pursuant to section 1126 of this title shall be registered in the Patent and Trademark Office, a certificate of registration shall be issued, and notice of the registration shall be published in the Official Gazette of the Patent and Trademark Office; or
    2. (2) a notice of allowance shall be issued to the applicant if the applicant applied for registration under section 1051(b) of this title.

 

 

Sec. 1064. Cancellation of registration

A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register established by this chapter, or under the Act of March 3, 1881, or the Act of February 20, 1905:
    1. (1) Within five years from the date of the registration of the mark under this chapter.
    2. (2) Within five years from the date of publication under section 1062(c) of this title of a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905.
    3. (3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or is functional, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 1054 of this title or of subsection (a), (b), or (c) of section 1052 of this title for a registration under this chapter, or contrary to similar prohibitory provisions of such prior Acts for a registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.
    4. (4) At any time if the mark is registered under the Act of March 3, 1881, or the Act of February 20, 1905, and has not been published under the provisions of subsection (c) of section 1062 of this title.
    5. (5) At any time in the case of a certification mark on the ground that the registrant (A) does not control, or is not able legitimately to exercise control over, the use of such mark, or (B) engages in the production or marketing of any goods or services to which the certification mark is applied, or (C) permits the use of the certification mark for purposes other than to certify, or (D) discriminately refuses to certify or to continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies:
Provided, That the Federal Trade Commission may apply to cancel on the grounds specified in paragraphs (3) and (5) of this section any mark registered on the principal register established by this chapter, and the prescribed fee shall not be required. Nothing in paragraph (5) shall be deemed to prohibit the registrant from using its certification mark in advertising or promoting recognition of the certification program or of the goods or services meeting the certification standards of the registrant. Such uses of the certification mark shall not be grounds for cancellation under paragraph (5), so long as the registrant does not itself produce, manufacture, or sell any of the certified goods or services to which its identical certification mark is applied.

 

 

Sec. 1125. False designations of origin, false descriptions, and dilution forbidden

  1. (a) Civil action
    1. (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which--
      1. (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
      2. (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities,
      shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
    2. (2) As used in this subsection, the term ``any person'' includes any State, instrumentality of a State or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
    3. (3) In a civil action for trade dress infringement 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 the matter sought to be protected is not functional.
  2. (b) Importation
    Any goods marked or labeled in contravention of the provisions of this section shall not be imported into the United States or admitted to entry at any customhouse of the United States. The owner, importer, or consignee of goods refused entry at any customhouse under this section may have any recourse by protest or appeal that is given under the customs revenue laws or may have the remedy given by this chapter in cases involving goods refused entry or seized.
  3. (c) Dilution by blurring; dilution by tarnishment
    1. (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. (2) Definitions
      1. (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:
        1. (i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.
        2. (ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.
        3. (iii) The extent of actual recognition of the mark.
        4. (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.
      2. (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:
        1. (i) The degree of similarity between the mark or trade name and the famous mark.
        2. (ii) The degree of inherent or acquired distinctiveness of the famous mark.
        3. (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
        4. (iv) The degree of recognition of the famous mark.
        5. (v) Whether the user of the mark or trade name intended to create an association with the famous mark.
        6. (vi) Any actual association between the mark or trade name and the famous mark.
      3. (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. (3) Exclusions
      The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:
      1. (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--
        1. (i) advertising or promotion that permits consumers to compare goods or services; or
        2. (ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.
      2. (B) All forms of news reporting and news commentary.
      3. (C) Any noncommercial use of a mark.
    4. (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--
      1. (A) the claimed trade dress, taken as a whole, is not functional and is famous; and
      2. (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.
    5. (5) Additional remedies
      In an action brought under this subsection, the owner of the 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) and 1118 of this title, subject to the discretion of the court and the principles of equity if--
      1. (A) the mark or trade name that is likely to cause dilution by blurring or dilution by tarnishment was first used in commerce by the person against whom the injunction is sought after October 6, 2006; and
      2. (B) in a claim arising under this subsection--
        1. (i) by reason of dilution by blurring, the person against whom the injunction is sought willfully intended to trade on the recognition of the famous mark; or
        2. (ii) by reason of dilution by tarnishment, the person against whom the injunction is sought willfully intended to harm the reputation of the famous mark.
    6. (6) Ownership of valid registration a complete bar to action
      The ownership by a person of a valid registration under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register under this chapter shall be a complete bar to an action against that person, with respect to that mark, that--
      1. (A)
        1. (i) is brought by another person under the common law or a statute of a State; and
        2. (ii) seeks to prevent dilution by blurring or dilution by tarnishment; or
      2. (B) asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement.
    7. (7) Savings clause
      Nothing in this subsection shall be construed to impair, modify, or supersede the applicability of the patent laws of the United States.
  4. (d) Cyberpiracy prevention
    1. (1)
      1. (A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person--
        1. (i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and
        2. (ii) registers, traffics in, or uses a domain name that--
          1. (I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;
          2. (II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or
          3. (III) is a trademark, word, or name protected by reason of section 706 of title 18 or section 220506 of title 36.
        1. (B)
          1. (i) In determining whether a person has a bad faith intent described under subparagraph (A), a court may consider factors such as, but not limited to--
            1. (I) the trademark or other intellectual property rights of the person, if any, in the domain name;
            2. (II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;
            3. (III) the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
            4. (IV) the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
            5. (V) the person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;
            6. (VI) the person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person's prior conduct indicating a pattern of such conduct;
            7. (VII) the person's provision of material and misleading false contact information when applying for the registration of the domain name, the person's intentional failure to maintain accurate contact information, or the person's prior conduct indicating a pattern of such conduct;
            8. (VIII) the person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and
            9. (IX) the extent to which the mark incorporated in the person's domain name registration is or is not distinctive and famous within the meaning of subsection (c).
          2. (ii) Bad faith intent described under subparagraph (A) shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.
        2. (C) In any civil action involving the registration, trafficking, or use of a domain name under this paragraph, a court may order the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark.
        3. (D) A person shall be liable for using a domain name under subparagraph (A) only if that person is the domain name registrant or that registrant's authorized licensee.
        4. (E) As used in this paragraph, the term ``traffics in'' refers to transactions that include, but are not limited to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration.
      2. (2)
        1. (A) The owner of a mark may file an in rem civil action against a domain name in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located if--
          1. (i) the domain name violates any right of the owner of a mark registered in the Patent and Trademark Office, or protected under subsection (a) or (c) of this section; and
          2. (ii) the court finds that the owner--
            1. (I) is not able to obtain in personam jurisdiction over a person who would have been a defendant in a civil action under paragraph (1); or
            2. (II) through due diligence was not able to find a person who would have been a defendant in a civil action under paragraph (1) by--
              1. (aa) sending a notice of the alleged violation and intent to proceed under this paragraph to the registrant of the domain name at the postal and e-mail address provided by the registrant to the registrar; and
              2. (bb) publishing notice of the action as the court may direct promptly after filing the action.
        2. (B) The actions under subparagraph (A)(ii) shall constitute service of process.
        3. (C) In an in rem action under this paragraph, a domain name shall be deemed to have its situs in the judicial district in which--
          1. (i) the domain name registrar, registry, or other domain name authority that registered or assigned the domain name is located; or
          2. (ii) documents sufficient to establish control and authority regarding the disposition of the registration and use of the domain name are deposited with the court.
        4. (D)
          1. (i) The remedies in an in rem action under this paragraph shall be limited to a court order for the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark. Upon receipt of written notification of a filed, stamped copy of a complaint filed by the owner of a mark in a United States district court under this paragraph, the domain name registrar, domain name registry, or other domain name authority shall--
            1. (I) expeditiously deposit with the court documents sufficient to establish the court's control and authority regarding the disposition of the registration and use of the domain name to the court; and
            2. (II) not transfer, suspend, or otherwise modify the domain name during the pendency of the action, except upon order of the court.
          2. (ii) The domain name registrar or registry or other domain name authority shall not be liable for injunctive or monetary relief under this paragraph except in the case of bad faith or reckless disregard, which includes a willful failure to comply with any such court order.
      3. (3) The civil action established under paragraph (1) and the in rem action established under paragraph (2), and any remedy available under either such action, shall be in addition to any other civil action or remedy otherwise applicable.
      4. (4) The in rem jurisdiction established under paragraph (2) shall be in addition to any other jurisdiction that otherwise exists, whether in rem or in personam.

     

     

    Sec. 1126. International conventions

    1. (a) Register of marks communicated by international bureaus
      The Director shall keep a register of all marks communicated to him by the international bureaus provided for by the conventions for the protection of industrial property, trademarks, trade and commercial names, and the repression of unfair competition to which the United States is or may become a party, and upon the payment of the fees required by such conventions and the fees required in this chapter may place the marks so communicated upon such register. This register shall show a facsimile of the mark or trade or commercial name; the name, citizenship, and address of the registrant; the number, date, and place of the first registration of the mark, including the dates on which application for such registration was filed and granted and the term of such registration; a list of goods or services to which the mark is applied as shown by the registration in the country of origin, and such other data as may be useful concerning the mark. This register shall be a continuation of the register provided in section 1(a) of the Act of March 19, 1920.
    2. (b) Benefits of section to persons whose country of origin is party to convention or treaty
      Any person whose country of origin is a party to any convention or treaty relating to trademarks, trade or commercial names, or the repression of unfair competition, to which the United States is also a party, or extends reciprocal rights to nationals of the United States by law, shall be entitled to the benefits of this section under the conditions expressed herein to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of a mark is otherwise entitled by this chapter.
    3. (c) Prior registration in country of origin; country of origin defined
      No registration of a mark in the United States by a person described in subsection (b) of this section shall be granted until such mark has been registered in the country of origin of the applicant, unless the applicant alleges use in commerce.
      For the purposes of this section, the country of origin of the applicant is the country in which he has a bona fide and effective industrial or commercial establishment, or if he has not such an establishment the country in which he is domiciled, or if he has not a domicile in any of the countries described in subsection (b) of this section, the country of which he is a national.
    4. (d) Right of priority
      An application for registration of a mark under section 1051, 1053, 1054, or 1091 of this title or under subsection (e) of this section, filed by a person described in subsection (b) of this section who has previously duly filed an application for registration of the same mark in one of the countries described in subsection (b) of this section shall be accorded the same force and effect as would be accorded to the same application if filed in the United States on the same date on which the application was first filed in such foreign country: Provided, That--
      1. (1) the application in the United States is filed within six months from the date on which the application was first filed in the foreign country;
      2. (2) the application conforms as nearly as practicable to the requirements of this chapter, including a statement that the applicant has a bona fide intention to use the mark in commerce;
      3. (3) the rights acquired by third parties before the date of the filing of the first application in the foreign country shall in no way be affected by a registration obtained on an application filed under this subsection;
      4. (4) nothing in this subsection shall entitle the owner of a registration granted under this section to sue for acts committed prior to the date on which his mark was registered in this country unless the registration is based on use in commerce.
      In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country, instead of the first filed foreign application: Provided, That any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for claiming a right of priority.
    5. (e) Registration on principal or supplemental register; copy of foreign registration
      A mark duly registered in the country of origin of the foreign applicant may be registered on the principal register if eligible, otherwise on the supplemental register in this chapter provided. Such applicant shall submit, within such time period as may be prescribed by the Director, a true copy, a photocopy, a certification, or a certified copy of the registration in the country of origin of the applicant. The application must state the applicant's bona fide intention to use the mark in commerce, but use in commerce shall not be required prior to registration.
    6. (f) Domestic registration independent of foreign registration
      The registration of a mark under the provisions of subsections (c), (d), and (e) of this section by a person described in subsection (b) of this section shall be independent of the registration in the country of origin and the duration, validity, or transfer in the United States of such registration shall be governed by the provisions of this chapter.
    7. (g) Trade or commercial names of foreign nationals protected without registration
      Trade names or commercial names of persons described in subsection (b) of this section shall be protected without the obligation of filing or registration whether or not they form parts of marks.
    8. (h) Protection of foreign nationals against unfair competition
      Any person designated in subsection (b) of this section as entitled to the benefits and subject to the provisions of this chapter shall be entitled to effective protection against unfair competition, and the remedies provided in this chapter for infringement of marks shall be available so far as they may be appropriate in repressing acts of unfair competition.
    9. (i) Citizens or residents of United States entitled to benefits of section
      Citizens or residents of the United States shall have the same benefits as are granted by this section to persons described in subsection (b) of this section.