Monday, July 11, 2016

Professor McCarthy Criticizes the TTAB's Dilution Analysis

Professor J. Thomas McCarthy has been a consistent critic of the TTAB's analysis in dilution cases, particularly the Board's failure to properly consider the issue of "impairment" or "damage" arising from the alleged dilution. He sent me the following comment for posting:


I wish the T.T.A.B. would stop saying that dilution of a mark can be shown merely by proving that the challenged mark causes people to think of the famous mark. In its March 31, 2016 decision in the Omega case (118 U.S.P.Q. 2d 1289, 1298) it quoted from its last year’s decision in the New York Yankees case (114 U.S.P.Q. 2d 1497, 1506). It said that dilution by blurring occurs when “a substantial percentage of consumers, on seeing the junior party's use of a mark on its goods, are immediately reminded of the famous mark and associate the junior party's use with the owner of the famous mark, even if they do not believe that the goods come from the famous mark's owner.” That’s just a part of what dilution demands and is not what the statute says.

The Board’s definition is only about what constitutes “association.” This is merely one ingredient of dilution. The statute says that dilution by blurring is an association arising from a similarity in the marks “that impairs the distinctiveness of the famous mark.” Lanham Act §43(c)(2)(B). The T.T.A.B.’s definition erases this critical “impairment” or “damage” requirement from the statute.

The Supreme Court made it clear that as a matter of basic dilution theory, proof of association is itself neither proof of blurring nor proof that blurring is likely: “‘[b]lurring’ is not a necessary consequence of mental association. (Nor, for that matter, is ‘tarnishing.’)” Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 434 (2003).

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 Text Copyright 2016.

5 Comments:

At 11:24 AM, Blogger Trademark Filer said...

If “a substantial percentage of consumers, on seeing the junior party's use of a mark on its goods, are immediately reminded of the famous mark and associate the junior party's use with the owner of the famous mark, even if they do not believe that the goods come from the famous mark's owner," this necessarily and automatically “... impairs the distinctiveness of the famous mark.” That's what the TTAB is saying; it is resolving the question of impairment with a finding of association. Is there legislative history or case law to the contrary?

 
At 1:32 PM, Anonymous Anonymous said...

I am no fan of dilution. It’s a giveaway to big companies. It doesn’t protect consumers at all. It has no place in trademark law. That said, it IS now the law. And the association IS the impairment when the issue is dilution by blurring. The House Report specifically say “Dupont shoes” and “BUICK aspirin” are “actionable.” The big guy’s brand used to be the only one consumers thought of. Now, they think of two. So it’s less distinctive, in the same way that the more third-party uses there are, the less distinctive a mark is for purposes of determining either inherent or acquired distinctiveness. Except that blurring isn’t a sliding scale that depends on how many other uses and for what. As the late/great Johnny Cochran might have said: “If you see a pair, then dilution is there.”

 
At 7:17 AM, Blogger John L. Welch said...

According to the statute, Section 43(c)(2)(B), dilution by blurring requires an "association ... that impairs." So ordinary rules of statutory construction tell you that some associations do not impair. Therefore association, by itself, does not equal impairment.

 
At 9:05 PM, Anonymous David Welkowitz said...

In response to Trademark Filer, there are cases to the contrary. Moseley is the most prominent, but you could also look at the recent case of Louis Vuitton v. My Other Bag (which also found fair use, but alternatively said association was not sufficient).

 
At 8:04 AM, Blogger John L. Welch said...

But in the Yankees "HOUSE THAT RUTH BUILT" case, the TTAB said that fair use is inapplicable when someone is trying to register a mark.

"The Board pointed out that this "fair use" exemption in the dilution statute applies to use of a famous mark "other than as a designation of source for the person’s own goods or services." Noncommercial use is also excluded. Here, applicant sought to register its marks as source indicators; it was not proposing merely ornamental, expressive, or noncommercial use. And so the fair use exception was inapplicable here, and this factor favored opposer."

 

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