Tuesday, June 15, 2010

Precedential No. 21: TTAB Sustains Dilution Claim For the First Time in Seven Years

Not since Hector was a pup has the TTAB sustained a dilution claim. In fact, it had sustained only one (NASDAQ) since dilution became available as a ground for opposition and cancellation in 1999. But the Board has found the mark THE OTHER RED MEAT for "fresh and frozen salmon" to be dilutive of the registered mark THE OTHER WHITE MEAT for "association services namely, promoting the interests of members of the pork industry." A "well-designed" telephone survey demonstrated an association between the marks, and played a crucial role in the Board's decision. National Pork Board and National Pork Producers Council v. Supreme Lobster and Seafood Company, 96 USPQ2d 1479 (TTAB 2010) [precedential].

This posting will not attempt to cover every facet of the decision, but will focus on the elements of the Section 43(c) dilution claim: (1) whether opposer's mark is famous: (2) whether it became famous prior to Applicant's filing date (i.e., its constructive first use date); and (3) whether Applicant's mark is likely to blur the distinctiveness of opposer's famous mark.

Fame?: Advertising expenditures, tracking studies, consumer surveys, and media references convinced the Board that THE OTHER WHITE MEAT is famous. "It is among the most well-know advertising slogans in the U.S. given awareness rates of eighty to eighty-five percent of the general adult population and rates of correct source recognition at nearly seventy percent of the population."

Famous When?: The Board also concluded that the fame of THE OTHER WHITE MEAT "was well-established prior to the date that Supreme Lobster and Seafood Company filed the involved application."

Blurring?: The Board looked to the non-exclusive factors set out in Section 43(c)(2)(B).

Beginning with the similarity between the marks, it found this factor favored Opposer, noting that the survey evidence "shows that more than thirty-five percent of the survey respondents associate applicant's slogan with opposers' slogan (or with the pork being promoted by the mark) in an unaided survey response. This degree of association demonstrates that a sizeable segment of the target population sees the two marks as similar."

Because Opposer's mark is registered, it is entitled to a presumption of inherent distinctiveness. Moreover, the mark is merely suggestive of "a healthy attribute of the commodity being promoted by the pork industry, namely, the color of some cuts of pork after being cooked." The Board found the mark to be inherently distinctive, and this factor weighed in Opposer's favor.

Opposer's use of the mark is "virtually exclusive," which again supports a finding of dilution by blurring.

Voluminous evidence established how well recognized the Opposer's mark is, and led the Board to conclude that "THE OTHER WHITE MEAT, has become part of the fabric of popular culture in the United States." This also supports "the conclusion that dilution by blurring is likely upon the introduction of applicant's slogan into the marketplace."

The Board was reluctant to find bad faith on the part of applicant, but it did find that "applicant's principals may have believed it was permissible for applicant to create such an association," and so the Board concluded that this factor favored Opposer.

Finally, as to actual association between Applicant's mark and Opposer's mark, the Board noted that Applicant has not yet used its mark, and so "this statutory factor too is neutral but consistent with a likelihood of dilution by blurring."

The Board therefore found dilution by blurring likely. It then declined to consider Opposer's likelihood of confusion claim.

TTABlog comment: Applicant put up quite a fight, but Opposer's evidence was overwhelming.

It is interesting that the Board declined to decide the Section 2(d) claim. Typically, it's the other way around in 2(d)/dilution cases. Would judicial economy have been better served by deciding both claims, in case one ruling gets overturned on appeal? How do you think the Section 2(d) claim would come out?

Copyright John L. Welch 2010.


At 8:19 AM, Anonymous Anne Gilson LaLonde said...

Just last week (the day before this opinion was issued, in fact), the pork industry announced that it was going to replace the "other white meat" slogan due to flat sales . . . . Possible abandonment claim on appeal? http://www.chicagotribune.com/business/sns-ap-us-pork-slogan,0,2906771.story

At 11:47 AM, Blogger Pamela Chestek said...

I had to look at the decision to see whether it was you or the Board that was so sloppy in the analysis (the Board, of course - how could I have doubted?). The Board improperly morphed "intent to create an association" into "bad faith" - "While we are reluctant to conclude bad faith on the part of applicant, we find that applicant’s principals may have believed it was permissible for applicant to create such an association, and hence, consistent with a likelihood of dilution by blurring, resolve this factor in opposers’ favor." Good thing they were reluctant, because it doesn't have to rise to the level of "bad faith." An innocent intent to create an association is still an intent to create an association.

At 2:07 PM, Anonymous Anonymous said...

Opposers argued bad faith. On the element of "intent to create an association," the Board explicitly refused to find bad faith. (at 56 - 58). Sloppy reading?

At 8:55 PM, Blogger Pamela Chestek said...

You expect me to READ 58 pages?? But seriously, I don't see anywhere in the decision where the Board mentions that it was the opposer who was suggesting that bad faith was the appropriate standard for this element of dilution. Now that you've brought my attention to it, I see in the opposer's brief that it blends bad faith and intent to create an association, but I don't think it's particularly clear in the decision that it was the opposer's argument. Now that you mention it, though, it makes sense. And the Board could have clarified that bad faith isn't the standard, particularly in a precedential decision.

At 6:59 AM, Blogger John L. Welch said...

In the Charbucks decision, the Second Circuit observed that "the determination of an 'intent to associate" ... does not require the additional consideration of whether bad faith corresponded with that intent." See Ted Davis article at p. 19.

At 2:48 PM, Anonymous Tom McCarthy said...

What I think is missing from the T.T.A.B.’s opinion is any discussion of what “dilution by blurring means” and whether the applicant’s mark was likely to “impair the distinctiveness of the famous mark.” Exactly how would the accused slogan probably sap the strength of the famous slogan? Just by itself or because it would likely be the first of many? The Board is silent.

The Board goes through the non-exclusive list of six factors and assumes in one sentence that blurring is likely: “Accordingly, after considering all the relevant factors, we find herein a likelihood of dilution by blurring.” None of the six factors directs attention to whether there is any evidence that it is likely that the famous mark’s strength will be “impaired.” This statutory omission apparently led the Board to simply ignore this crucial link in the chain of proof.


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