Westchester Women's Bar Association

Likelihood of Confusion Fame v. Dilution Fame

Under Trademark law a determination that a mark is "famous" will benefit the registrant or applicant and broaden the registrant's or applicant's trademark rights. However, the legal definition for "fame" is different under a likelihood of confusion analysis verses a dilution claim. The United States Court of Appeals for the Federal Circuit (the "CAFC") has held “[T]he proper legal standard for evaluating the fame of a mark under the fifth DuPont factor is the class of customers and potential customers of a product or service, and not the general public.” See Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 122 USPQ2d 1733 (Fed. Cir. 2017) [precedential] ". The question to ask is, is the mark renown within a specific product market? Thus, the viewpoint is from consumers of similar products. The Court held that the "fame" factor should be given reasonable weight among the totality of the circumstances for a likelihood of confusion analysis. The CAFC stated that under a dilution claim, fame either exists or does not exist; it is an all or nothing test. In contrast, under likelihood of confusion, fame is measured along a spectrum from very weak to very strong. Based on these principals of law, the CAFC remanded Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC to the Board to reconsider the merits based on the proper standard of analysis.

The CAFC also held in the concurring opinion (Judge Newman) that the Board did not consider the Respondent, Fairmont Holdings, LLC's actual use of the mark on the product, and that use of the mark on the goods is relevant to a likelihood of confusion analysis. However, as many trademark practitioners are aware, the Board rarely will consider marketplace conditions. Instead, the Board focuses on the identification of the goods and not marketplace realities. But the Concurring opinion emphasizes that use of the mark on the product is a consideration among the totality of the circumstances. The specimen showed the common feature of the mark, the term "INSIGNIA" in larger print than other elements of the mark and separated from other elements of the mark. It has been held that consideration of actual use will ensure that the Board will consider the breadth of the standard character mark. This is an important consideration because the commercial impression is viewed through the eyes of the consumer. See Duopross Meditech Corp. v. Inviro Med. Devices, 695 F.3d 1247, 1253–54 (Fed. Cir. 2012). Lastly, the CAFC held that evidence of relatedness should be viewed on a sliding scale. For more on fame and likelihood of confusion, see the firm's blog entitled, TTAB-Precedent How Fame Impacts A Likelihood Of Confusion Determination.

Regarding the fame that must attach to a mark for purposes of a dilution claim under the provisions of the Trademark Act, such fame must be greater than the fame required for protection under a likelihood of confusion analysis. For a dilution claim, a party must show that when the general public encounters the mark, it associates the term with the mark owner. For a successful claim for dilution under Section 43(c) of the Trademark Act, the party must plead and prove: (1) plaintiff owns a famous mark that is distinctive (inherently or through acquired distinctiveness); (2) defendant is using a mark in commerce that allegedly dilutes plaintiff's famous mark; (3) defendant’s use of its mark began after plaintiff’s mark became famous and the mark remains famous at the time of trial; and (4) defendant’s use of its mark is likely to cause dilution by blurring. See, Nike, Inc. v. Palm Beach Crossfit Inc., 116 USPQ2d 1025 (TTAB 2015) (citing Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d 1713, 1723-24 (Fed. Cir. 2012)).

The following factors are relevant to a dilution claim, the extent, duration and geographic reach of advertising and publicity, and whether it was the mark owner or a third party who advertised or publicized the mark; amount, volume, and geographic extent of the sales, recognition of the mark, and if the mark is registered on the Principal Register. In determining if a mark is likely to cause dilution by blurring the following factors are pertinent: (1) similarities between the marks; (2) degree of distinctiveness of the famous mark; (3) extent of substantially exclusive use of the famous mark; (4) degree of recognition of the famous mark (level of fame); (4) was there an intended association with the famous mark; and (5) any actual association between the marks. See Tivo Brands, LLC v. Tivoli, LLC, 129 USPQ2d 1097 (TTAB 2018) [precedential]. For more on dilution claims, see the firm's blog entitled, Chanel Inc.'s Successful Opposition Based On Dilution By Blurring. If you have questions about a famous mark, please do not hesitate to contact the firm for a courtesy consultation.

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