"Fame Law: Requiring Proof of National Fame in Trademark Law," by Xuan-Thao Nguyen
The TTAB has not posted a decision on its FOIA webpage for four weeks. So let's continue with our supplementary reading on dilution. Here is an article by Xuan-Thao Nguyen entitled Fame Law: Requiring Proof of National Fame in Trademark Law, 33 Cardozo Law Review 89 (2011). Professor Nguyen argues that, under the TDRA, not only must the fame of a mark be nationwide in order to qualify for dilution protection, but also the mark must be recognized by at least 70% of the general consuming public.
Professor Nguyen asserts that courts have had problems with the TDRA's fame standard. Some continued to apply the rejected concept of niche fame. Others ignored the fame standard altogether, zeroing in on the dilution by blurring or tarnishment question. Still others superficially considered fame and wound up with questionable conclusions.
In her view, "the courts should impose upon the plaintiff the burden of submitting a consumer survey evidencing the overall, general consuming public recognition of the trademark throughout the United States." Evidence of sales volume, advertising and promotional expenditures, and geographical reach would still be required, but they "should not be a substitute for consumer survey evidence proving at least seventy percent of the general consuming public" recognizes the mark.
For other articles and pertinent Board decisions, type the word "dilution" into the TTABlog search box, and see what comes up.
Text Copyright John L. Welch 2011.