"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.
posted by John L. Welch @ 12/20/2011
4 comments
4 Comments:
The problem with these scholarly analyses is that they are fun to debate but do not address the reason for a dilution laws. I believe more than half the states have their own, and many are decades old. They have been used when appropriate and the sky has not fallen.
How do you stop someone from opening a Coca Cola muffler shop without a dilution statute? Or is the author's premise that this type of free riding on another's reputation and trademark is ok? If so, we need a lot fewer trademark lawyers since there isn't much need to try and protect trademarks. I recognize that a number of cases have been brought that were clear overreaching-- and alleged fame and dilution of marks that were never intended to be covered by such statutes. The solution is for judges to quickly toss such cases and send the message that dilution is for relatively few trademarks or relatively bad defendant behaviour.
Joe and I are on the same page on this. Requiring survey evidence in every case is not a practical. Is there any question that Disney, POLO or GE are famous trademarks? The issue in all cases is whether enough evidence has been made of record to support the fame prong of the test. Whether to use survey evidence, in my opinion, should be left up to counsel in deciding his/her strategy for each particular case. Not mandated by statute or some higher authority. If that is the case, then you might as well specify and identify the evidence that would be needed to prove ALL cases. That approach takes the creativity and "fun" out of the law. It might also be downright unconsitutional. (Not sure about that last sentence -- just through it in :-0)
To take a free ride on one of the recent articles: much of the dilution doctrine is a myth. Those for whom the law is intended: Coca Cola, Ralph Lauren, etc. don't need it. They can prevail under likelihood of confusion analysis. And there simply haven't been many(any?) Buick aspirin cases.
The real problem is the calculated or mistaken assertion of the dilution doctrine by companies with brands that are almost certainly not famous. EAT MOR ____ are we serious here?
And counting on judges to solve the problem is itself a problem. Many companies simply cannot afford to fight the dubious claims, so they capitulate. Indeed, the number of litigated cases that turn solely on dilution is, or was, very very small.
In sum: the dilution doctrine continues to fail a cost benefit analysis.
If the state presence of the mark is that important then TRIPS/WIPO Recommendations is useless.
Under TRIPS/WIPO Recommendations if the mark is not even present in the country like not applied / registered, not used, not present at all then also it must get protection under the principle of national treatment.
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