Monthly Archives - October 2017

The relative fame of a Trademark is an important factor when claims of dilution are raised by a Trademark owner against a 3^rd party to determine whether or not actual dilution of the registered mark took place.  One type of claim for dilution, namely dilution by blurring, occurs when a 3^rd party begins using a mark, slogan or log that closely resembles another party’s registered Trademark, in order to benefit from the good reputation or popularity of the registered “famous” mark through an implied association. In this example, the owner of the alleged famous Trademark would assert claim of dilution against the 3^rd party in order to not only prevent confusion amongst consumers as to the origin of the marks, but to eliminate any misconception that one mark is associated, affiliated and/or approved by the famous mark.  The senior user of the mark is seeking to prevent a newcomer from riding on the coattails of their hard work, success and goodwill in creating and using their mark. When determining if dilution by blurring has occurred, a Court will look at whether or not the prior mark is famous and distinctive, either inherently or through acquired distinctiveness. If the mark is determined to be famous, the court will look at a number of factors to determine if dilution by blurring has occurred. These factors include:

• The degree of similarity between the mark or trade name and the famous mark.
• (ii) The degree of inherent or acquired distinctiveness of the famous mark.
• (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
• (iv) The degree of recognition of the famous mark.
• (v) Whether the user of the mark or trade name intended to create an association with the famous mark.
• (vi) Any actual association between the mark or trade name and the famous mark.

So what does it take for a Trademark to become famous?  First, the prior mark must have achieved fame before the 3^rd began using their own mark, in addition the owner of the alleged famous mark bears the burden to prove that their mark is famous.  Second, the Court will look at a number of factors when determining whether or not a mark is famous including the duration, extent, and geographic reach of advertising and publicity of the mark; the amount volume and geographic extent of sales of goods or services offered under the mark; and the extent of actual recognition of the mark. The burden is high for a mark to be considered famous; there is no exact path to follow that will guarantee fame.  Marks such as Coca-Cola, Kool-Aid, Kleenex and Sony are considered famous, however back in April 2016, the mark Lady Gaga was not found to reach the standard of a famous mark. In sum, a mark that is instantly recognizable, nationally known, a high number of sales and great deal of advertising are all likely requirements for fame to be achieved.

One of the prerequisites to securing a Federal Trademark registration is through the use and creation of a distinctive mark.  There are five main categories of marks that exist which provide varying levels of distinctiveness: generic, descriptive, suggestive, arbitrary, and fanciful. While, suggestive, arbitrary and fanciful marks are considered distinctive by the Trademark Office, both, generic and descriptive marks fail to reach that threshold. A fanciful mark is one that has no meaning outside of its use as a trademark, such as Exxon or Starbucks. An arbitrary mark is a word that is known but is in no way related to the goods or services being offered; a classic example is “Apple” for computers. A suggestive mark suggests a character or quality of the goods but requires at least some though or imagination to relate the term to the goods themselves. Some common examples of suggestive marks include Microsoft, Citibank and Greyhound. A mark that is merely descriptive of the goods and services offered in connection with the mark generally is not entitled to registration on the Principle Register.  However, a mark that may be classified as merely descriptive may be able to gain acquired distinctiveness through secondary meaning over the passage of time.  In most instances, acquired distinctiveness is usually shown through five or more years use and evidence that consumers have come to associate the mark with the goods and services offered. Generic marks, however, have no such exception; the Lanham Act clearly states that generic marks are not eligible for registration.  Generic marks are those that are named after the goods or services being sold.  For example, if someone sought to register the mark “Apple” for the sale of apples, the Trademark Office would consider this to be generic.  Alternately, when the term, “Apple” is used in conjunction with computers, this use would be allowable as the mark does not relate to the goods being associated with the mark.  One of the main principles behind this rule is that the Trademark Office seeks to prevent the ownership of common terms, and rather allow these terms to be in the public domain for everyone to use. In some instances, a mark may start out as distinctive, however over time the marks may become generic due to the public’s perception and use of the mark.  In these circumstances, the Lanham Act based on §14(3) calls for cancellation of the registration.  A few examples of marks that have become generic over time include “Escalator,” “Aspirin,” “Thermos,” “Trampoline,” and “Dry Ice.”  Each of these marks became victims of what has come to be known as “genericide.” The public adopted these marks as a name for the good itself, forfeiting the use of the terms as a brand. Other marks have trended towards generic in nature, but have been able to escape cancellation; these marks include Google, Kleenex, Band-Aid, Crock-pot, Frisbee and Ping Pong. Although many people use these terms to describe the general good or service, the current generic terms still remain, namely internet search engine, facial tissue, adhesive bandage, slow-cooker, flying disc and table tennis. Owners of these marks have been able to maintain ownership through active enforcement of their rights against unauthorized users and through advertisement and labeling of their products to promote these marks as a brand rather than as a product. The more popular a mark becomes, and the more the mark tends to dominate the field of its particular good or service, the harder it becomes for owners to avoid the cancellation due to the genericide of the mark.