1. Worldwide. For Our Clients. Trademark Dilution Law in the United States September 14, 2004

2. Dilution in General  THE LESSENING IN VALUE OF A FAMOUS MARK TWO TYPES  BLURRING  TARNISHMENT

3. Dilution in General (cont’d)  BLURRING KODAK pianos BUICK aspirin TIFFANY trash cans

4. Dilution in General (cont’d) TARNISHMENT

5. Dilution in General (cont’d)

7. Development of U.S. Dilution Law  Frank Schecter (1927 law-review article): “preserving uniqueness of trademarks”  Patchwork nature of state dilution laws 36 states with dilution statutes 1 state (Ohio) with common-law dilution

8. Development of U.S. Dilution Law (cont’d) New York General Business Law § 360-l  Likelihood of injury to business reputation or of dilution of the distinctive quality of a mark or trade name shall be a ground for injunctive relief in cases of infringement of a mark registered or not registered or in cases of unfair competition, notwithstanding the absence of competition between the parties or the absence of confusion as to the source of goods or services.

9. Development of U.S. Dilution Law (cont’d) dilution by tarnishment: “injury to business reputation” likelihood of dilution courts reluctant to enforce literal terms of dilution laws  Allied Maintenance Corp. v. Allied Mechanical Trades, Inc., 42 N.Y. 2d 538 (1977): interpreted dilution statute literally federal trademark registration preempts state dilution claims

10. Development of U.S. Dilution Law (cont’d)  SECTION 43(C) OF LANHAM ACT (The Federal Trademark Dilution Act [“FTDA”]) (1996) enacted to create effective, uniform dilution law 15 U.S.C. § 43(c)(1): “The owner of a famous mark shall be entitled... 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...” 15 U.S.C. § 45 defines dilution as “the lessening of the capacity of a famous mark to identify and distinguish goods and services...”

11. Development of U.S. Dilution Law (cont’d) statutory fame factors (not an exclusive listing)  degree of distinctiveness  duration and extent of use  duration and extent of advertising  geographical extent of trading area  channels of trade  degree of recognition of plaintiff’s mark in defendant’s market area  third-party uses of same/similar mark  existence of a federal registration for plaintiff’s mark

12. Development of U.S. Dilution Law (cont’d) remedies  injunctive relief: forward-looking  damages if willful intent  attorney fees if willful intent (exceptional cases) defenses  fair use  noncommercial use  news reporting and commentary

13. Development of U.S. Dilution Law (cont’d)  COUNTERVAILING CONSIDERATIONS: THE FIRST AMENDMENT parody and satire noncommercial-use defense MasterCard Int’l Inc. v. Nader, 70 U.S.P.Q. 2d 1046 (S.D.N.Y. 20004)

14. Supreme Court: Moseley v. V Secret Catalogue, Inc. [Plaintiff’s mark VICTORIA’S SECRET for women’s lingerie products; Defendant’s mark VICTOR’S LITTLE SECRET for adult novelty items]  ULTIMATE QUESTION PRESENTED AFTER BRIEFING: Does a dilution plaintiff need to demonstrate present economic injury?  HOLDING: The FTDA requires proof of actual dilution.

15. Supreme Court: Moseley v. V Secret Catalogue, Inc. (cont’d)  WHY WAS CERT GRANTED? no state dilution law (Kentucky): focus only on FTDA clean case: only dilution no issue of fame: conceded at trial not identical marks: so no Q of circumstantial proof

16. Supreme Court: Moseley v. V Secret Catalogue, Inc. (cont’d)  FULL HOLDING need proof of actual dilution  contrast between state and federal statutes  plain statutory meaning  contrast in language of § 45  consumer surveys

17. Supreme Court: Moseley v. V Secret Catalogue, Inc. (cont’d) need a change in conception of the senior mark  more than mental association (where marks are not identical)  must reduce the capacity of the famous mark (plaintiff’s mark) to identify the goods

18. Supreme Court in Moseley actual loss of sales/profits need not be proven insufficient evidence of actual dilution; remand

19. Supreme Court: Moseley v. V Secret Catalogue, Inc. (cont’d)  DICTA circumstantial evidence will suffice  i.e. identical marks dilution as a property right  harm to the senior user  not intended to protect consumers  not about free-riding/unjust enrichment tarnishment “arguably” not part of § 43(c)

20. Open Questions Remaining / Forum-Shopping Issues  NICHE FAME: can a mark be famous in a niche market? the term “niche fame” really encompasses 2 distinct issues  fame in the specialized market  fame in the localized geographic area niche fame suffices if plaintiff and defendant are in the same market fame in niche market insufficient: need nationwide fame

21. Open Questions Remaining / Forum-Shopping Issues (cont’d)  ACQUIRED vs. INHERENT DISTINCTIVENESS? only inherently distinctive marks qualify for dilution protection acquired distinctiveness suffices, if the mark has become famous  TARNISHMENT: part of FTDA?  IDENTICAL MARKS: sufficient by themselves?  TTAB: LIKELIHOOD OF DILUTION IS SUFFICIENT FOR OPPOSITION/CANCELLATION PROCEEDINGS

22. Proving Dilution  OPEN QUESTION AS TO THE TYPE OF PROOF NEEDED FOR DILUTION no court has pinpointed how to prove dilution after Moseley  EVIDENCE OF ACTUAL DILUTION customer complaints consumer surveys lost sales/profits lost licensing revenues/weakened royalty value

23. Proving Dilution (cont’d)  DILUTION: EASY TO ARTICULATE, HARD TO PROVE how to demonstrate effects of dilution? theory vs. practice

24. Trademark Dilution Law THANK YOU