Friday, February 25, 2005

TTAB Grants Summary Judgment On Dilution Claim: Marks Too Dissimilar

The TTAB seldom decides dilution issues. Plaintiffs typically couple dilution claims with Section 2(d) claims, and when the Board finds likelihood of confusion, it will decline to rule on dilution. When the Section 2(d) claim fails, the Board will usually dismiss the dilution claim with little discussion -- after all, if a plaintiff's mark is not strong enough to support a Section 2(d) claim, it won't be strong enough for a Section 43(c) claim.

The Board will, however, tackle one particular dilution issue, and will even do so on summary judgment: whether the marks involved are sufficiently similar to support a dilution claim.

The Board granted partial summary judgment to Applicant Armour Gear LLC, dismissing Opposer's dilution claim in K.P. Sports, Inc. v. Armor Gear LLC, Opposition No. 91157069 (February 14, 2005) [not citable]. Opposer's mark UNDER ARMOUR (in block letter and design form) was just too dissimilar from Applicants mark ARMOR GEAR (in block letter and design form).

"For the Board to find that dilution has occurred, or is likely to occur, we must find that the involved marks are more than merely similar; a party must show that the marks are identical or 'very or substantially similar.' See Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1183 (TTAB 2001). *** [W]e find that there is no genuine issue that the marks in their entireties are not substantially similar for dilution purposes."
TTAB defendants should take note: a quick, inexpensive, and effective way to de-rail a dilution claimant is to move for summary judgment on the issue of the similarity of the marks.

For a review of TTAB dilution jurisprudence, see my article entitled "Dilution at the TTAB: What to Prove and How to Prove It", 17 Allen's Trademark Digest 7, pp. 9-19 (January 2004). In addition to the cases discussed in that article, two decisions reported by the TTABlog should be noted. Because the marks involved were too dissimilar, the Board dismissed dilution claims in: The Pep Boys Manny, Moe & Jack of California v. Hanharutaivan, Opposition No. 91105133 (Sept. 29, 2004) [not citable]. [PEP BOYS/CARRYBOY & Design], discussed here; and Dream Merchant Co. v. Fremonster Theatrical, Opposition No. 91152686 (June 17, 2004) [not citable], reconsideration denied (September 28, 2004). [CIRQUE DU SOLEIL/CIRQUE DE FLAMBE], discussed here.

Text ©John L. Welch 2005. All Rights Reserved.


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