Further Comments of Professor McCarthy Regarding TTAB Dilution Analysis
Professor McCarthy responds below to the comments on this TTABlog post regarding his criticism of the TTAB's dilution analysis.
I don’t agree with the commenters who argue that the T.T.A.B. is correct in thinking that "association" automatically proves that it is likely (probable) that the famous mark will be harmed and lose strength. I disagree with the argument that the existence of ANY other similar mark on ANY goods or services creates actionable "dilution" – once there was one, now there are two. First, the plaintiff would have to prove it’s mark is unique – the one and only trademark use of this designation – on any goods or services. Second, this would create a true "right in gross," which everyone has always said is what dilution law does not do. (That's a monopoly on the word as a mark.) The statute says that plaintiff must prove that the "association" created by the accused mark "impairs the distinctiveness of the famous mark." The Supreme Court said in Victoria’s Secret that association does not prove impairment.
Plaintiff must articulate some scenario in which there a likelihood that the strength of the plaintiff’s mark will be lessened. For example, Judge Furman found no dilution by a parody of Louis Vuitton expensive handbags even though there was association: "Significantly, it is not enough to show—as Louis Vuitton indisputably can—that members of the public are likely to 'associate' the defendant’s mark with the plaintiff’s mark (or that the defendant promotes such association)….. [T]he operative question is whether the kind of association [defendant] creates here is likely to impair the distinctiveness of Louis Vuitton’s marks." Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 117 U.S.P.Q. 2d 1537, 1545, 2016 WL 70026, *7, (S.D.N.Y. 2016).
In the 2016 T.T.A.B. Omega case, OMEGA watch alleged that collegiate fraternity Alpha Phi Omega’s use of its name in Greek letters ( ΑΦΩ) on shirts would dilute the OMEGA mark in English or as the Greek letter Ω. The Trademark Board denied applicant's motion for summary dismissal of the opposition to its application for the three Greek letters. In my opinion, the Board should have found that there is no plausible situation under which the Greek lettered name of the fraternity on T-shirts would be likely to impair the distinctiveness of the OMEGA or Ω marks for watches. If so trivial a registered use can be held likely to damage the OMEGA mark for watches, then the watch company truly would have a monopoly on all commercial use of a letter from the Greek alphabet. To me, that would expand trademark law beyond all reasonable bounds. I think there could be "blurring" only if when people see the OMEGA watch mark, they will think of the Alpha Phi Omega name and that will impair the strength of the OMEGA mark. Omega v Alpha Phi Omega, 118 U.S.P.Q. 2d 1289, 1300 (T.T.A.B. 2016)
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