Westchester Women's Bar Association

Famous Trademarks Receive a Broader Scope of Protection

Famous marks are those that have an immediate connection in the minds of the consumers with a specific product or service and the source of that product or service. Examples of famous trademarks are APPLE, COCA-COLA, MCDONALDS and NIKE. Famous trademarks enjoy a broad scope of legal protection because they are more likely to be associated and remembered in the public's mind. The Trademark Trial and Appeal Board (the "Board") has determined that multiple marks are famous including: (1) GOOGLE for search engine services; (2) KOHLER for plumbing fixtures; (3) GATORADE for energy and fruit; and (4) THERAFLU for cold remedies.

The Court of Appeals for the Federal Circuit has commented that achieving the legal standard of fame "often requires a very distinct mark, enormous advertising investments and a product of lasting value." The benefit of owning a famous trademark is that consumers rely on the symbols to identify the source of a quality product or service. There are legal standards under U.S. trademark law for famous trademarks. The standards vary for "fame" requirements for purposes of likelihood of confusion and dilution causes of action.

The fame of a registered mark is a dominant factor to be considered in determining likelihood of confusion. A party asserting that their trademark is famous must clearly establish that its mark is viewed by relevant consumers as a famous mark and submit evidence into the record so it may be considered. Direct evidence of consumer recognition is not required. See our blog post entitled, TTAB Precedent-How Fame Impacts A Likelihood Of Confusion Determination, for more details regarding the fame factor and its implications on the du Pont analysis.

The elements considered in a fame evaluation in a likelihood of confusion analysis are the volume of sales and advertising expenditures of the goods or services sold under the mark, the duration of use of the trademark, use and or license of the mark for a variety of products or services, and lack of third party use of a similar trademark. See Giant Food, Inc. v. Nation's Foodservices, Inc., 710 F.2d 1565, 218 U.S.P.Q. 390 (Fed. Cir. 2004), where the Court held that the mark GIANT FOOD was famous based on 45 years of use, extensive media exposure, sales in excess of $1 billion per year, and prominent display on the facade of supermarkets.

Regarding a dilution cause of action, dilution by blurring is an association between a trade name or a trademark and a famous trademark due to similarities between the marks. In addition, the distinctiveness of the famous mark must be impaired. The Court of Appeals for the Federal Circuit has required that the plaintiff prove the following elements to succeed on a dilution by blurring cause of action. The plaintiff's trademark must be shown to be distinctive and famous; and the defendant must be using a mark in commerce that is diluting the plaintiff's famous mark, the defendant's use of the trademark must have begun after the plaintiff's mark became famous and it must be found that the defendant's use is likely to cause dilution by blurring. See our blog post entitled, Chanel Inc.'s Successful Opposition Based On Dilution By Blurring, for more details regarding a dilution claim. In addition, see our blog post entitled, McDonald's Wins A Likelihood Of Confusion And Dilution Victory, to learn how the Board and the Court of Appeals for the Federal Circuit have dealt with dilution claims when there is a family of marks involved.

There is another recognized federal cause of action in the U.S. for famous trademarks known as dilution by tarnishment. This refers to use of a famous trademark in connection with goods or services of poor quality or of an unsavory nature. Dilution can occur even if the two companies are not competitors and there is no likelihood of confusion. While it may require some additional effort and resources to prove your mark is famous, such legal status can afford a trademark a broader scope of protection and provide additional causes of action. If you need assistance determining whether a mark has reached famous status, kindly contact our office for a courtesy consultation.

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