Two Dilution Claims: TTAB Finds "IVY LEAGUE" to be Famous, But Not "ASUS"

On May 8th, the Board decided two oppositions involving claims of dilution-by-blurring under Secction 43(c) of the Lanham Act. In one, it found the marks THE IVY LEAGUE and IVY LEAGUE to be "household names." Council of Ivy Group Presidents v. IV League Nurse Concierge, Inc., Opposition No. 91285794 (May 8, 2025) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.). In the other, the Board found that the mark ASUS had achieved at most "niche" fame for computers and related products as of the critical date. ASUSTeK Computer Incorporation v. ASOS plc, Opposition No. 91264402 (May 8, 2025) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

IVY LEAGUE: The Board sustained this opposition to registration of the mark shown above, for "intravenous (IV) hydration therapy services" [NURSE CONCIERGE, INC. disclaimed], on the ground of dilution-by-blurring under Section 43(c) of the Lanham Act. The Board declined to reach opposer's Section 2(d) likelihood of confusion claim.

The term “Ivy League” was coined in the 1930s by a sportswriter to collectively refer to Brown University, Columbia University, Cornell University, Dartmouth College, Harvard University, the University of Pennsylvania, Princeton University, and Yale University. Continuous and extensive promotion and use of the marks, unsolicited media coverage, social media engagements, licensing and policing of the marks, and dictionary listings of the term "Ivy League" led the Board to conclude that THE IVY LEAGUE and IVY LEAGUE are "household names, and for the purposes of dilution, famous marks." The Board also found that the IVY LEAGUE marks were famous before applicant's constructive first use date in 2022.

Next, the Board deemed Applicant’s mark and Opposer’s THE IVY LEAGUE and IVY LEAGUE marks to be "similar because they share the same phonetically identical dominant terms, 'IV LEAGUE' in Applicant’s mark and 'IVY LEAGUE' in opposer’s marks." Opposer's marks are inherently distinctive and there was no evidence that their use was not substantially exclusive. Although there was no direct evidence (e.g., a survey) of the degree of recognition of opposer's marks, the indirect evidence proved that the marks "have attained a significant level of recognition."

We find that THE IVY LEAGUE and IVY LEAGUE marks are publicly associated with Opposer’s educational services such that these marks are “now primarily associated with the owner of the mark[s] even when [they are] considered outside of the context of the owner’s goods and services.” Toro, 2001 TTAB LEXIS 823, at *59-60

There was no evidence that applicant intended to create an association with opposer, nor any evidence of any actual association of applicant's mark with those of opposer.

Concluding that all of the dilution factors favored opposer or were neutral, the Board sustained the dilution-by-blurring claim.

ASUS v. ASOS: ASUSTeK opposed registration of the mark ASOS for downloadable application software and downloadable publications for mobile devices for the purpose of the retail of goods in relation to fashion, clothing, footwear, activewear, headwear, cosmetics, toiletries, grooming, homeware and gifts, in view of the registered ASUS for a variety of products, including gaming hardware, desktop computers, laptop computers, monitors, graphics cards, keyboards, mice, headsets and microphones, mobile phones, other computer and communication devices. The Board dismissed ASUSTeK's likelihood of confusion claim primarily because of a failure to prove that the involved goods are related, supported by the eighth DuPont factor: the lack of evidence of actual confusion despite 20 years of concurrent use.

With respect to its dilution claim, ASUSTeK had to show that its mark became famous before applicant's constructive first use date in November 2016. Its proofs fell short. Although it has used ASUS mark for 35 years, ASUSTeK's sales figures were post-2016 and its evidence of advertising prior to 2016 was "spotty" and not limited to the United States. And it provided no evidence of social media followers or customers in the United States as of the critical date.

Opposer’s evidence shows, at most, that as of November 16, 2016 the ASUS mark was recognized for computers and similar products. This is not sufficient for a dilution claim. Coach Servs., 668 F.3d at 1372 (“By using the ‘general consuming public’ as the benchmark, the TDRA eliminated the possibility of ‘niche fame,’ which some courts had recognized under the previous version of the statute.”).

Therefore, the Board dismissed the dilution-by-blurring claim.

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TTABlogger comment: Cast yourself back to 2016. Was ASUS a household name in your house? Maybe if you had a cat named ASUS.

Text Copyright John L. Welch 2025.