Wednesday, May 13, 2020

Professor J. Thomas McCarthy Comments on the JUST DREW IT! Dilution Ruling

Professor J. Thomas McCarthy has been critical of the TTAB's dilution decisions (few that there are), and he left a few comments on this blog regarding the recent ruling in Nike, Inc. v. Jamin Caldwell and Courtney Miles: [TTABlogged here].

J. Thomas McCarthy

Why did the TTAB , after finding likelihood of confusion, go on to plunge the dagger in again and find dilution? As usual, the Board just assumed away the statutory requirement of dilution that there be proof of a likelihood that the challenged use "impairs the distinctiveness of the famous mark." They assume that if the accused mark is likely to create an association with the famous mark, then there must be a likelihood of impairment to the distinctiveness of the famous mark. This ignores the Supreme Court’s recognition in Victoria’s Secret that proof of association is not proof of blurring: "'[b]lurring' is not a necessary consequence of mental association. (Nor, for that matter, is ‘tarnishing.’)"

Picking up on the dilution point in the previous comment, my view is that the reason so many dilution claims are made both in federal courts and the TTAB is because the mark owners' litigators are fearful of being sued for malpractice if the case is lost and they include an anti-dilution claim. An increasing number of District Court judges are throwing out a dilution count on a Rule 12(b)(6) motion because the "famous mark" allegation is just not plausible. The is dangerous to the mark owner's case because it suggests to the judge that the rest of the plaintiff's case is equally implausible.

Read comments and post your comment here.

TTABlogger comment: Professor McCarthy and I have at least one thing in common - we both have degrees in "electrical engineering."

Text Copyright John L. Welch 2020.

4 Comments:

At 12:46 PM, Anonymous Paul Reidl said...

At the risk of being sued, I am not sure that malpractice liability is the reason. I think that most lawyers have no idea how difficult it is for a mark to qualify for dilution protection. They throw-in the claim as an "add-on," only to have it thrown out as implausible.

 
At 6:43 PM, Anonymous Anonymous said...

Plus mustaches.

 
At 10:28 PM, Anonymous Anonymous said...

Not sure why you put electrical engineering in quotes. What did I miss?

 
At 9:12 AM, Blogger John L. Welch said...

I put "electrical engineering" in quotes because (I think) in most engineering schools it's now called "electrical and electronic engineering" or "electronic and computer engineering" or something. I think "electrical engineering" is an anachronism.

 

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