Professor McCarthy: The Trademark Trial and Appeal Board’s (Mis)Treatment of the Anti-Dilution Act

Professor J. Thomas Mc Carthy has given me permission to post the following comments on the TTAB's treatment of the issue of dilution. His comments stem from the Ninth Circuit's recent decision in the BAD SPANIELS case [TTABlogged here], in which the appellate court vacated the permanent injunction issued by the Arizona district court, based on dilution by tarnishment, and remanded the case for entry of judment in favor of VIP Products.

The Trademark Trial and Appeal Board’s (Mis)Treatment of the Anti-Dilution Act

Ever since enactment of the Trademark Dilution Revision Act of 2006, the Trademark Trial and Appeal, in my view, has been much more willing than the courts to find a violation of Section 43(c) of the Trademark Act because the Board’s requirement for proof of a violation is much less demanding than that applied by the courts.

The Lanham Act defines dilution by blurring as resulting from an “association arising from the similarity between [an accused] mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” Similarly, the Act defines dilution by tarnishment as an “association arising from the similarity between [an accused] mark or trade name and a famous mark that harms the reputation of the famous mark.” In both situations, an essential element of a violation is proof of the likelihood of some form of detriment to the mark: either impairment of the strength of the famous mark or harm to its reputation.

European Union law explicitly prohibits both dilution and free-riding. But unlike European Union law, federal U.S. anti-dilution law solely prohibits the likelihood of dilutive injury. The 2006 Trademark Dilution Revision Act is not an “anti-free-riding” law.

“Association” (the accused mark calls to mind the famous mark) and harm to the famous mark are two separate elements of a claim of dilution. But the Trademark Trial and Appeal Board has consistently made the assumption that if the accused mark is so similar to the famous mark that there is “association” (it calls to mind the famous mark), then it can be assumed without proof that there is a likelihood of harm or impairment to the famous mark. As discussed in the McCarthy treatise at §24:100, the Board does not require any evidence to conclude that there is a likelihood of detriment to the mark. The Board simply assumes that if the accused mark calls to mind the famous mark, then there must be harm to the famous mark.

The fallacy of the Board’s reasoning is shown by the recent Ninth Circuit decision in the Jack Daniel’s case. VIP Products, LLC v. Jack Daniel's' Properties, Inc., 2026 WL 2237625 (9th Cir. 2026). The Ninth Circuit said that evidence of harm is required and here, the evidence did not support a conclusion of harm to the famous Jack Daniel’s whiskey mark and trade dress. Jack Daniel's claimed that VIP’s parody dog toy constituted both trademark infringement and dilution by tarnishment. After remand from the Supreme Court, the district court found no trademark infringement but did find dilution by tarnishment. It reasoned that a parody dog toy with a label featuring jokes about dog poop constituted dilution by tarnishment and it enjoined the accused dog toy.

The Ninth Circuit reversed. “Association” was not in issue because as a parody, the point of the dog toy joke was to bring to mind the Jack Daniel’s marks. The court emphasized that both association and harm must be proven. “The plaintiff … bears the burden of both establishing association and showing that the association dilutes the famous mark. [Jack Daniel’s] did not do so here.“ The plaintiff’s survey expert only provided evidence of the broad impact of a message of defecation with regard to the consumption of food and drink. “There is no evidence in the record from which a court could reasonably infer that scatological references made on a dog toy have the same likelihood of generating disgust as identical references on a consumable product meant for humans might. “ Thus, there was no evidence of harm to the famous Jack Daniel’s marks.

The Ninth Circuit decision is consistent with the Second Circuit’s 2009 decision holding that proof of association is not itself proof of detriment to the famous mark. The Second Circuit held that a small, family-owned coffee roaster’s MISTER CHARBUCKS for a dark-roasted blend was not proven to be likely to “tarnish” plaintiff's famous STARBUCKS mark for coffee: “[A] mere association between ‘Charbucks’ and ‘Starbucks,’ coupled with a negative impression of the name ‘Charbucks,’ is insufficient to establish a likelihood of dilution by tarnishment. “ Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97, 110 (2d Cir. 2009) (“We will not assume that a purportedly negative-sounding junior mark will likely harm the reputation of the famous mark by mere association….”).

These Second and Ninth Circuit cases are both consistent with the Supreme Court’s 2003 Victoria’s Secret case. While the high court was dealing with the 1996 Act, this part of the ruling is equally applicable to the 2006 version: “[T]he mere fact that consumers mentally associate the junior user's mark with a famous mark is not sufficient to establish actionable dilution. …. [S]uch mental association will not necessarily reduce the capacity of the famous mark to identify the goods of its owner….” Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 434 (2003).

The Trademark Trial and Appeal Board is clearly out of step with these decisions.

Read comments and post your comment here.

TTABlogger comment: If you put the word "spaniels" in the TTABlog search engine, you'll get a whole string of posts regarding the VIP case.

Text Copyright John L. Welch and J. Thomas McCarthy 2026.