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How Famous is "Famous"? Considerations for a Dilution Defendant
Practical Law Legal Update 3-580-0725 (Approx. 4 pages)
How Famous is "Famous"? Considerations for a Dilution Defendant
by Practical Law Intellectual Property & Technology
| Published on 09 Sep 2014 • USA (National/Federal) |
A discussion of the key considerations for assessing whether a plaintiff's trademark has met the Lanham Act standard for fame in a trademark dilution action. Topics discussed include the legal standard, statutory fame factors, and the role of niche fame.
You’re reviewing a trademark infringement complaint served on your brand owner client and there it is, the obligatory federal dilution claim. Is there a legitimate basis for it? Sure, you’ve heard of the plaintiff's trademark. You might even think it's famous. But is it legally famous: is it famous enough to be protected from dilution under the Lanham Act?
TDRA's High Fame Standard
Under the federal Lanham Act, only "famous" trademarks are protected from dilution (15 U.S.C. § 1125(c)(1)).
In its amendments to Section 43(c) of the Lanham Act, the Trademark Dilution Revision Act of 2006 (TDRA) defined a famous mark for a dilution claim as one that is widely recognized by the general US consuming public as a designation of source of the goods or services of the mark's owner (15 U.S.C. § 1125(c)(2)(A)).
This standard may be hard to satisfy, however, and a defendant should not presume the fame of the plaintiff's mark. Some courts have characterized the test as requiring that the mark rise to the level of being a "household name" (see, for example, T-Mobile US, Inc. v. AIO Wireless LLC, 991 F. Supp. 2d 888, 930 (S.D. Tex. Jan. 22, 2014)). The US Court of Appeals for the Third Circuit has remarked that the Lanham Act's fame standard is rigorous, with protection extending only to highly distinctive marks that are well-known throughout the country (see Green v. Fornario, 486 F.3d 100, 105 (3d Cir. 2007)).
Statutory Factors for Assessing Fame
Section 43(c) of the Lanham Act sets out the four specific factors a court may apply to determine if a mark possesses the requisite degree of consumer recognition to be famous. These are:
- The duration, extent and geographic reach of advertising and publicity of the mark, whether by the trademark owner or third parties.
- The amount, volume and geographic extent of sales of goods or services under the mark.
- The extent of actual recognition of the mark.
- Whether the mark was federally registered on the principal trademark register or under a federal trademark act before the Lanham Act.
These factors are nonexhaustive (see, for example, Visa Int'l Serv. Ass'n v. JSL Corp., 590 F. Supp. 2d 1306, 1315 (D. Nev. 2008)). Courts have also considered factors not set out in the statute, such as the third-party use and the defendant's admissions about the fame of the plaintiff's mark.
Other Considerations
Other factors a defendant faced with a federal trademark dilution claim should consider include the following:
- Niche fame is no longer sufficient. Before the TDRA, some courts had held that marks can be famous within a limited geographic area or specialized market, commonly described as niche fame. However the TDRA statutorily eliminated niche fame as a basis for protection by providing that a famous mark must be recognized as a designation of source by the general consuming public of the US (see, for example, Water Pik, Inc. v. Med-Systems, Inc., 848 F. Supp. 2d 1262, 1282 (D. Colo. 2012)). As a result, the marks in the following cases did not meet the TDRA fame standard:
- in Marci's Fun Food, LLC v. Shearer's Foods, Inc., the court granted summary judgment on a dilution claim, finding the plaintiff's mark MARCI'S OLD FASHIONED KETTLE CORN lacked fame where product sales were limited to New York, Ohio, Indiana, Pennsylvania and West Virginia (No. 10-188, , at *8 (W.D. Pa. Nov. 7, 2011));
- in Board of Regents v. KST Electric, the court found that Texas University's longhorn logo did not satisfy the Lanham Act fame standard where the evidence showed the logo had only niche market fame, namely fame among college football fans (see 550 F. Supp. 2d 657, 678 (W.D. Tex. 2008)); and
- in Roederer v. J. Garcia Carrion, S.A., the court found that the plaintiff's CRISTAL mark was not famous for dilution purposes where its fame at the relevant time was limited to the wine industry (732 F. Supp. 2d, 836, 880 (D. Minn. 2010)).
- The dilution fame standard is higher than the strength standard. Courts have recognized that greater fame is required for a dilution claim than to show the strength of a mark in a likelihood of confusion analysis.
- Fame must arise before the diluting activity. A trademark owner cannot state a dilution cause of action under the Lanham Act if its mark did not become famous until after the defendant began the allegedly diluting use (15 U.S.C. § 1125(c)(1)).
For more on fame in dilution claims, see Practice Note, Trademark Litigation: Proving Fame for Dilution Claims. For more on federal dilution claims generally, see Practice Note, Trademark Infringement and Dilution Claims, Remedies and Defenses. For information on dilution claims under state law, see Trademark Laws: State Q&A Tool.