Wednesday, June 22, 2016

Fame of Empire State Building Design Mark Yields TTAB Dilution Victory

The Board sustained an opposition to registration of the mark NYC BEER & Design (shown below left), for beers, concluding that the mark is likely to dilute Opposer’s famous design mark depicting the Empire State Building (shown below right). ESRT Empire State Building, L.L.C. v. Michael Liang, Opposition No. 91204122 (June 17, 2016) [not precedential].

Applicant Liang described his mark as including “a building resembling the Empire State Building” and he acknowledged that the building is famous. Opposer relied on, inter alia, two registration for its design mark for entertainment services (the observation deck) and real estate management and leasing services. The registrations described the mark as consisting of “the shape of the exterior of a skyscraper with a pointed, spindled top.”

Since the opposed applications were filed under Section 1(b) based upon intent-to-use, Opposer needed to prove that its marks became famous prior to the filing date of the applications.

The Board observed that fame for likelihood of confusion purposes differs from dilution fame; the latter is not determined in the context of certain goods or services, but rather the dilution claimant ‘must show that when the general public encounters the mark ‘in almost any context, associates the term, at least initially, with the mark’s owner.’”

The evidence established that the Empire State Building was completed in 1 931 and for 40 years was the tallest building in the world. It has been featured in hundreds of movies, including King Kong and Sleepless in Seattle. It features a 103rd floor observation deck visited by millions of guests per year. Opposer’s marks have been used with a wide variety of goods and services, and numerous licenses have acknowledged Opposer’s rights in the marks, with full attribution. Its annual sales revenues and advertising expenditures in connection with the marks are “very significant.” The marks receive extensive media exposure in print, radio, television, and the Internet. The Board therefore found the marks to be famous under Section 43(c)(2)(A).

Turning to the six non-exhaustive factors of Section 43(c)(B)(i)-(vi) for assessing the likelihood of dilution by blurring, Applicant’s witness stated that the building depicted in applicant’s mark is the Empire State Building, and there was no evidence to indicate otherwise. Nor was there any evidence that the marks lack inherent distinctiveness. Opposer’s use of its marks is “substantially exclusive.

There was no direct evidence, such as a survey, showing the level of recognition of the mark, but opposer’s activities in branding, co-sponsorship, and licensing of its design mark support its “its efforts to create maintain recognition not only of the Empire State Building, but of its activities under the mark.” There was no evidence that applicant intended to create an association with Opposer’s mark, nor any evidence of actual association, but as to the latter, applicant has not yet commenced us of his mark.

The Board concluded that applicant’s mark is likely to cause dilution by blurring of Opposer’s design mark. The Board declined to analyze Opposer’s Section 2(a) false association and Section 2(d) likelihood of confusion claims.

Read comments and post your comment here.

TTABlog comment: There are so few TTAB dilution decisions, why wasn't this precedential?

Text Copyright John L. Welch 2016.


At 11:17 AM, Blogger Jonathan Hudis said...

TTABlog comment: There are so few TTAB dilution decisions, why wasn't this precedential? I couldn't agree more! J Hudis

At 11:24 AM, Anonymous Mark said...

Seems to me the Board "blurred" somewhat the distinction between the marks and the building. If "the dilution claimant ‘must show that when the general public encounters the mark ‘in almost any context, associates the term, at least initially, with the mark’s owner.’” it is not clear that Opposer met that standard. Sure, everybody recognizes the building, but do they associate images of the building that constitute the marks with the Opposer? Doubtful. Rather, people recognize the building as a famous building, not for its connection to its owners and operators. Yes, the evidence of licensed merchandise in the shape of the building is helpful, but I'm still not absolutely convinced it means that the mark passes the test. This is one of the problems with a trademark in a building shape.

At 11:49 AM, Anonymous Anonymous said...

Hmmm. Personally, other than perhaps souvenir replicas and other such merchandise, I do not associate all uses of the image of the Empire State Building with the owners of the building itself, I just associate the image with NYC generally (and I'm from NY). I think a survey on this issue would have been interesting.

At 12:13 PM, Anonymous Anonymous said...

This is so bizarre. The dilution analysis was based on the fame of the building, but the trademark is supposed to be a depiction of the building, not the building itself. If the trademark is being considered as the building itself, then how does the actual building function as a trademark? If the trademark is the depiction of the building, then how is the fame of the building itself relevant?

Also, the specimens filed for both of these trademark registrations are just pictures of the building. In other words, the specimens do not match the mark because the trademark is for the actual design shown, not for the building itself.

Am I the only one scratching my head over this? I, for one, am glad that this stinker is not precedential.


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