The relative fame of a Trademark is an important factor when claims of dilution are raised by a Trademark owner against a 3rd 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 3rd 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 3rd 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 3rd 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.