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fame

VIEWS: 108 PAGES: 38

									                           What it Takes to Be Famous
                                      INTA Dilution Committee


                                              October 2004



Members of the Fame Subcommittee

                    ∗
Ayala Deutsch, Chair∗
Jennifer Adams Draffen
Kristin Allen
M. Christopher Bolen
Karen Wetherell Davis
Daphne Gronich
Roberta Jacobs-Meadway
Karen Marie Kitterman
Kenneth Kwartler
Michael Murphy
Stacey Rabbino
Sondra Schol
Edward Schuth
Kiersten Skog



Notice: All information provided by the International Trademark Association in
this document is provided to the public as a source of general information on
trademark and related intellectual property issues. In legal matters, no publication
whether in written or electronic form can take the place of professional advice given
with full knowledge of the specific circumstances of each case and proficiency in the
laws of the relevant country. While efforts have been made to ensure the accuracy
of the information in this document, it should not be treated as the basis for
formulating business decisions without professional advice. We emphasize that
trademark and related intellectual property laws vary from country to country, and
between jurisdictions within some countries. The information included in this
document will not be relevant or accurate for all countries or states.


∗ The chair wishes to thank Daniel Glantz, a legal intern at the National Basketball Association, for his
valuable assistance in editing this paper.
Table of Contents
                                                                        Page

I.    Introduction                                                       1

II.   Fame Factors                                                       1

      A.     Discussion of the Fame Factors                              2

             1.      Degree of Distinctiveness of the Mark               2

             2.      Duration and Extent of Use                          4

             3.      Duration and Extent of Advertising and Publicity    6

             4.      Geographical Extent and Trading Area                7

             5.      Channels of Trade                                   7

             6.      Degree of Recognition and Survey Evidence           8

             7.      Nature and Extent of Use of Similar Marks           9

             8.      Whether the Mark is Registered                      10

             9.      Other Factors                                       11

      B.     Summary of the Fame Factors by Circuit                       11

             1.      First Circuit                                       11

             2.      Second Circuit                                      11

             3.      Third Circuit                                       12

             4.      Fourth Circuit                                      12

             5.      Fifth Circuit                                       13

             6.      Sixth Circuit                                       13

             7.      Seventh Circuit                                     14

             8.      Eighth Circuit                                      14

             9.      Ninth Circuit                                       14
              10.    Tenth Circuit                               15

              11.    Eleventh Circuit                            15

              12.    Federal Circuit                             16



III.    Fame Assumed, Uncontested or Found Without Analysis      16

IV.     Niche Fame                                               17

        A.    Niche Fame in a Specialized Market Segment         18

        B.    Niche Fame Based on Geographical Scope             20

        C.    Circuits that Reject Niche Fame                    20

        D.    General Criticisms and Limitations of Niche Fame   22


V.      Fame in Cybersquatting Cases                             23

        A.    Pre-ACPA Cases – The Stretch to Determine Fame     23

        B.    Post-ACPA Cases                                    26


VI.     Fame Before the Trademark Trial and Appeal Board         27

        A.     Junior Party’s Use in Commerce                    28

        B.    Junior Party Adopted the Mark After Senior Mark
              Became Famous                                      28

        C.    Fame and Distinctiveness of the Senior Mark        29


VII.    Fame Under State Dilution Laws                           33

VIII.   Conclusion                                               34
I.       INTRODUCTION
        A trademark owner must prove a number of elements to state a claim for dilution,
the fame of its mark chief among them. Because only famous marks are entitled to
protection under dilution law, the question of whether a mark is famous is a threshold
issue that must be determined at the outset of the dilution analysis. Without fame, all
other dilution elements are moot.

        There is no specific definition of what constitutes “fame” for purposes of dilution,
although both the federal statute and numerous judicial decisions shed light on the
inquiry. This paper addresses what is required for a mark to be found famous in the
context of a claim for trademark dilution. Section II addresses the eight fame factors set
forth in the federal dilution statute and summarizes application of those factors by the
courts, including a break down by factor and circuit. Section III briefly discusses dilution
cases in which courts have found fame without specifically analyzing any of the
suggested fame factors. Section IV addresses the concept of niche fame and includes
discussion of decisions applying that doctrine as well as criticisms of the doctrine by
courts and commentators. Section V analyzes dilution claims raised in domain name
dispute cases, both before and after enactment of the Anti-Cybersquatting Consumer
Protection Act. Section VI analyzes the dilution fame concept as it relates to opposition
proceedings before the United States Patent and Trademark Office, including summaries
of relevant decisions by the Trademark Trial and Appeal Board. Section VII briefly
addresses state dilution laws.


II.      FAME FACTORS


       The Federal Trademark Dilution Act (“FTDA”) sets forth eight factors that a
court may consider in order to determine whether a mark is famous:

      1. The degree of inherent or acquired distinctiveness of the mark;

      2. The duration and extent of use of the mark in connection with the goods or
         services with which the mark is used;

      3. The duration and extent of advertising and publicity for the mark;

      4. The geographical extent of the trading area in which the mark is used;

      5. The channels of trade for the goods or services in relation to which the mark is
         used;

      6. The degree of recognition of the mark in the trading areas and channels of trade of
         the mark’s owner and the person against whom the injunction is sought, including
         the use of survey evidence;

      7. The nature and extent of use of the same or similar marks by third parties; and


                                              1
    8. Whether the mark was registered under the Act of March 3, 1881, or the Act of
       February 20, 1905, or on the principal register. 1

    A.            Discussion of the Fame Factors

        Although courts occasionally will assume that a mark is famous, see infra at
Section III.A, as a general rule courts will consider at least some of the eight factors
identified in the FTDA in determining fame, even if the statute is not specifically cited.
Courts generally agree that “fame” is something more than “distinctiveness” or
“secondary meaning.”2 Although application of the fame factors does not yield a
consistent formula, some courts have noted that most trademark owners seeking
protection under the FTDA should be able to satisfy each of the first six factors.3
However, courts have not required that a plaintiff make a showing on each of the eight
statutory factors in order to establish that its mark is famous.

               1.     Degree of Distinctiveness of the Mark
        As noted above, courts generally agree that a mark must be more than “distinctive
in a trademark sense”4 to be found famous under the FTDA. However, many courts
have noted that a mark with a high degree of inherent distinctiveness weighs in favor of
finding the mark famous.5 For example, in Gideons Int’l, Inc. v. Gideon 300 Ministries,


1. See 15 U.S.C. § 1125(c). These factors are not exhaustive, and Congress is considering amendments to
the FTDA that might include additional factors or clarification/revision of current factors.

2. See, e.g., Washington Speakers Bureau, Inc. v. Leading Auths., Inc., 46 F. Supp. 2d. 488 (E.D. Va.
1999), aff’d without opinion, 217 F.3d 843 (4th Cir. 2000) (noting that courts should be selective and
discriminating when construing a mark as famous); Michael Caruso & Co. v. Estafan Enters., Inc., 994 F.
Supp. 1454 (S.D. Fla.), aff’d without dec., 166 F.3d 353 (11th Cir. 1998) (finding that a mark must be more
than distinctive and must “rise to the level of ‘BUICK’ or ‘KODAK’” to be famous); Avery Dennison
Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999) (holding that dilution is a cause of action reserved for a
distinct class of marks with powerful consumer associations); I.P. Lund Trading ApS v. Kohler Co., 163
F.3d 27 (1st Cir. 1998) (holding that district court erred in finding mark was famous simply because it had
acquired secondary meaning).

3. See Hershey Foods Corp. v. Mars, Inc., 998 F. Supp. 500 (M.D. Pa. 1998). The court ultimately
determined that Hershey failed to establish fame in connection with an abbreviated version of its candy
product trade dress, because: (1) several third parties in the food industry used a similar trade dress; and (2)
Hershey had not registered the abbreviated trade dress, the seventh and eighth fame factors listed in the
FTDA. Id.

4. See, e.g., Avery Dennison Corp., 189 F.3d at 876 (“[T]o be capable of being diluted, a mark must have a
degree of distinctiveness and ‘strength’ beyond that needed to serve as a trademark.”); Michael Caruso &
Co. v. Estafan Enters, Inc., 994 F. Supp. 1454 (S.D. Fla.), aff’d without dec., 166 F.3d 353 (11th Cir. 1998).

5. See, e.g., Panavision Int’l, L.P. v. Toeppen, 945 F. Supp. 1296 (N.D. Cal. 1996), aff’d, 141 F.3d 1316
(9th Cir. 1998) (noting that plaintiff’s marks could not be found in the dictionary); Nike, Inc. v. Variety
Wholesalers, Inc., 274 F. Supp. 2d 1352 (S.D. Ga. 2003) (considering inherent distinctiveness of NIKE);
Gateway v. Companion Products, 68 U.S.P.Q.2d (BNA) 1407 (Dist. S.D. 2003) (noting that plaintiff’s
mark, which consisted of cow spots, was arbitrary); Visa Int'l Serv. Ass'n v. JSL Corp., 2002 U.S. Dist.
LEXIS 24779 (D. Nev. Oct. 22, 2002); Victoria’s Cyber Secret L.P. v. V Secret Catalogue, Inc., 161 F.


                                                       2
Inc.,6 the court determined that the plaintiff’s GIDEONS mark commanded a high degree
of distinctiveness, as evidenced by the fact that dictionaries defined the term GIDEONS
by reference to the plaintiff.7 Conversely, in Thane Int’l v. Trek Bicycle Corp.,8 the court
found that the plaintiff’s TREK mark was suggestive of bicycles and, therefore not highly
distinctive, and that this fact indicated, but did not compel, the conclusion that the mark
was not famous.9 Similarly, in Advantage Rent-A-Car, Inc. v. Enterprise Rent-A-Car
Co.,10 the court cited the descriptiveness of the mark WE’LL PICK YOU UP as
contributing to its conclusion that the mark was not famous.11

        Some courts specifically have reserved protection under the FTDA for marks that
are inherently distinctive. For example, in TCPIP Holding Co., Inc. v. Haar
Communications Inc.,12 the plaintiff provided evidence of $280 million in sales from 228
stores in twenty-seven states, as well as evidence of tens of millions of dollars in
advertising expenditures over the decade preceding the lawsuit. Citing the plaintiff’s
failure to include consumer surveys, press accounts, or substantiation for its claim that it
had used the mark for thirty years, the Second Circuit determined that the plaintiff failed
to make an adequate showing of fame.13 The court further held that inherent
distinctiveness is required for protection under the FTDA and, consequently, that marks
that have acquired distinctiveness could not obtain such protection.14

      However, many courts have found a descriptive mark to be famous upon a
showing that the mark had been used for many years, advertised, or promoted


Supp.2d 1339 (S.D. Fla. 2001); Big Ten Conf. v. Big Ten Worldwide Concert & Sport, 2000 U.S. Dist.
LEXIS 22328 (E.D. Mich. 2000) (finding “Big Ten” mark inherently distinctive).

6. 94 F. Supp.2d 566 (E.D. Pa. 1999).

7. Id. See also Binney & Smith v. Rose Art Indus., 60 U.S.P.Q.2d 2000 (E.D. Pa. 2001) (establishing fame
of Crayola color scheme, citing virtually universal recognition, supported by survey evidence, placement in
Smithsonian permanent collection, and appearance on commemorative U.S. postage stamp).

8. 305 F.3d 894 (9th Cir. 2002).

9. Id.

10. 238 F.3d 378 (5th Cir. 2001).

11. Id.

12. 244 F.3d 88 (2d Cir. 2001).

13. Id.


14. Id. This ruling was extended to colors, under the rationale that color marks cannot be inherently
distinctive pursuant to the Supreme Court’s Qualitex decision. See Deere & Co. v. MTD Holdings, Inc.,
2003 U.S. Dist. LEXIS 19161 (S.D.N.Y. October 27, 2003) (plaintiff’s mark consisting of colors yellow
and green for lawn care products was not inherently distinctive, and thus ineligible for protection under the
FTDA).



                                                      3
extensively, or that there had been significant revenue associated with the mark.
According to these courts, when a mark is not inherently distinctive, the plaintiff will
need to establish secondary meaning in the mark. Specifically, the plaintiff must
demonstrate that its mark has been heavily advertised and promoted so that a large
number of people have been exposed to the mark, and that there has been substantial
revenue generated by sales of the goods or services associated with the mark, thereby
establishing that the mark has reached a level of acquired distinctiveness that would
support a finding of fame.15 In Avery Dennison Corp. v. Sumpton,16 the Ninth Circuit, in
examining whether the surname marks at issue had become famous, specifically rejected
the notion that a mark must be inherently distinctive to be famous, but noted that fame
requires a greater showing than mere acquired distinctiveness.17 Similarly, in I.P. Lund
Trading ApS and Kroin Inc. v. Kohler Co.,18 the First Circuit found that the trade dress at
issue was not distinctive, not registered, and not so well publicized and known that it had
achieved the level of fame Congress intended.19

         There are some cases in which courts have concluded, without analysis, that a
mark is well-known or very distinctive, in essence taking judicial notice of
distinctiveness.20 The courts in these cases typically have considered other factors, such
as length of use or extent of advertising, before concluding that a mark is famous.
However, there are also cases, discussed in more detail below, see infra at Section III.A,
in which courts have concluded that a mark is famous without any analysis of additional
factors.

                 2.       Duration and Extent of Use
         The duration and extent of use of a mark contributes significantly to the fame
analysis. As would be expected, the longer the plaintiff’s use of the mark, the more
likely it is to be held famous. In Ringling Bros., the lower court found that the plaintiff’s


15. See, e.g., Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 955 F.
Supp. 605 (E.D. Va. 1997), aff’d, 170 F.3d 449 (4th Cir. 1999); Times Mirror Magazines, Inc. v. Las Vegas
Sports News, L.L.C., 212 F.3d 157 (3d Cir. 2000) (finding niche market fame for THE SPORTING NEWS
mark based in part on use in commerce since 1886 and evidence of millions of dollars in advertising
expenditures). See also Binney & Smith v. Rose Art Indus., 60 U.S.P.Q.2d 2000 (E.D. Pa. 2001)
(establishing fame of Crayola color scheme, citing over $200 million in advertising expenditures over five
years, as well as advertising dating back forty years).

16. 198 F.3d 868 (9th Cir. 1999).

17. Id. at 877.

18. 163 F.3d 27 (1st Cir. 1998).

19. Id.

20. See, e.g., America Online Inc, v. LCGM, Inc., 46 F. Supp.2d 444 (E.D. Va. 1998) (finding that
plaintiff’s AOL mark was recognizable throughout the world); Playboy Enters, Inc. v. Asiafocus Int’l, Inc.,
No. Civ. A. 97-734-A 9 (E.D. Va. 1998) (finding that the marks PLAYBOY and PLAYMATE had
developed significant goodwill and secondary meaning so that the fame of the marks could not reasonably
be disputed).



                                                     4
use of THE GREATEST SHOW ON EARTH mark since the 1870s supported the
contention that the mark was famous.21 Similarly, in Avery Dennison, the court found
that the marks at issue had been in use since the 1930s and the 1800s, respectively, and
that such long-term use weighed in favor of finding fame.22 Likewise, in Gideons Int’l,23
the court determined that use of the GIDEONS mark for more than one hundred years,
combined with a geographic scope of use extending internationally and even into outer
space via Apollo 8, favored a finding of fame.24

        In cases in which the length of the plaintiff’s use of the mark is shorter, outcomes
vary. In Gateway v. Companion Prods.,25 the court noted that the plaintiff had used and
advertised its “cow spot” design mark for over ten years, finding the mark famous under
the FTDA.26 In Michael Caruso & Co. v. Estafan Enters., Inc.,27 the court determined
that fifteen years of use was generally insufficient to conclude that the mark was
famous.28 However, in Victoria’s Cyber Secret L.P. v. V Secret Catalogue, Inc.,29 the
court found the plaintiff’s mark famous based on nineteen years of use.30

        Additionally, courts have required consistent use of a mark in order to find fame.
For example, in Columbia Pictures Indus., Inc. v. Screen Gems Film Co., Inc.,31 the
plaintiff’s evidence of use in connection with hundreds of television programs and
motion pictures made for television, dating back to 1948, was undercut by the plaintiff’s
failure to produce new material in connection with its SCREEN GEMS mark until just
before the action was filed.32 The court ultimately determined that the plaintiff failed to
establish sufficient evidence of fame to prevail on summary judgment, based in part on



21 See 955 F. Supp. 605. See also Times Mirror Magazines, Inc., 212 F.3d at 157 (3d Cir. 2000) (finding
niche market fame for THE SPORTING NEWS based in part on use in commerce since 1886).

22. See 189 F.3d at 876.

23. 94 F.Supp.2d 566 (E.D. Pa. 1999).

24. Id. See also Binney & Smith, 60 U.S.P.Q.2d 2000 (E.D. Pa. 2001) (establishing fame of Crayola color
scheme, citing over fifty years of use).

25. 68 U.S.P.Q.2d (BNA) 1407 (Dist. S.D. 2003).

26. Id.

27. 994 F. Supp. 1454, aff’d without dec., 166 F.3d 353 (11th Cir.).

28. Id.

29. 161 F. Supp. 2d 1339 (S.D. Fla. 2001).

30. Id.

31. 2001 U.S. Dist. LEXIS 16892 (S.D.N.Y. October 17, 2001).

32. Id.


                                                     5
the plaintiff’s inconsistent use.33

        3.      Duration and Extent of Advertising and Publicity
        Many courts have analyzed the duration and extent of advertising and publicity of
a mark in determining its fame. Courts considering this factor often have cited
significant amounts spent on advertising when concluding that a mark is famous. As
noted above, courts also have looked to both the duration and the extent of advertising
and publicity of a mark to determine whether the mark has acquired a high degree of
distinctiveness.34 The Seventh Circuit specifically has held that the duration of publicity
and extent of publicity may be balanced, finding that “massive publicity” for the drug
PROZAC, over a relatively short eleven-year period, was sufficient to establish fame.35
However, a showing of substantial advertising, promotion and/or sales alone is generally
not sufficient to establish that a mark is famous.36

       Extensive unsolicited publicity also can lend support to a finding of fame. For
example, in Gideons Int’l, Inc. v. Gideon 300 Ministries, Inc.,37 the court found that
extensive unsolicited publicity surrounding the GIDEONS mark was particularly


33. Id.

34. See, e.g., Avery Dennison, 189 F.3d at 868 (the fact that plaintiff spent $5 million per year advertising
and promoting the marks and sold $3 billion a year worth of trademarked products supported the
conclusion that the surname marks had acquired a high degree of distinctiveness); Big Boy Rest. v.
Cadillac Coffee Co., 238 F. Supp.2d 866 (E.D. Mich. 2002) (plaintiff’s BIG BOY mark found to be famous
in light of decades of extensive national and international advertising); Playboy Enters., Inc., v. Asiafocus
Int’l, Inc., No. Civ. A. 97-734-A (E.D. Va. 1998) (national and international advertising and promotion
was extensive such that the PLAYBOY mark had acquired goodwill and secondary meaning); Ringling
Bros., 955 F. Supp. at 610 (noting extensive advertising of the mark, including 6.5 billion reproductions or
images of the mark in markets where the plaintiff’s circus performed); Binney & Smith, 60 U.S.P.Q.2d
2000 (E.D. Pa. 2001) (establishing fame of Crayola color scheme, citing advertising dating back forty
years, combined with over $200 million in advertising expenditures over preceding five years); Times
Mirror Magazines, Inc., 212 F.3d at 157 (3d Cir. 2000) (finding niche market fame for THE SPORTING
NEWS based in part on use in commerce since 1886 and evidence of millions of dollars in advertising
expenditures); General Motors Corp. v. Autovation Techs., Inc., 317 F. Supp. 2d 756, 764 (E.D. Mich.
2004) (noting that the GM had established considerable goodwill in its trademarks by expending hundreds
of millions of dollars and significant effort in advertising and promoting its marks).

35. See Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456 (7th Cir. 2000).

36. See, e.g., Washington Speakers Bureau, Inc. v. Leading Auths., Inc., 33 F. Supp.2d. 488 (E.D. Va.
1999), aff’d without opinion, 217 F.3d. 843 (4th Cir. 2000) (noting that plaintiff spent considerable sums
advertising and promoting its service, but finding that the mark was not famous); Corbitt Mfg. Co., Inc. v.
GSO America, Inc., 197 F. Supp.2d 1368 (S.D. Ga. 2002) (holding that, aside from quoting sales figures,
plaintiff had not provided evidence of the degree of recognition of the mark); Carnival Corp. v. SeaEscape
Casino Cruises, Inc., 74 F. Supp.2d 1261 (S.D. Fla. 1999) (holding that extensive advertising and sales
were not sufficient to establish fame of FUN SHIP mark); Alltel Corp. v. Actel Intergraded
Communications, Inc., 42 F. Supp.2d 1265 (S.D. Ala. 1999) (holding that substantial advertising was not
sufficient to establish fame of the mark).

37. 94 F. Supp. 2d 566 (E.D. Pa. 1999).



                                                      6
illustrative of fame given the plaintiff organization’s strict policy against seeking
publicity or advertising.38

                4.     Geographical Extent and Trading Area
       Courts frequently have held that a mark used nationally,39 worldwide,40 and even
universally41 is famous. However, at least one court has noted that worldwide use is not
relevant in determining fame under the FTDA. In Avery Dennison, the Ninth Circuit
agreed that national use was relevant, but found that the plaintiff’s worldwide sales were
not supportive of fame.42

                5.     Channels of Trade
        The fame factor assessing the channels of trade for goods or services has most
commonly been examined in cases that discuss niche fame. For example, in Trek
Bicycle, the Ninth Circuit held that mobile bicycles and elliptical orbit machines do not
operate in the same narrow market segment for purposes of the niche fame concept,
despite both sharing the general sporting goods market.43

        Similarly, in Sigma Chi Fraternity v. Sethscot Collection,44 the court rejected the
concept of niche market fame and held that, even if a mark is distinctive in a particular
market, such market distinction does not render the mark inherently distinctive so as to
establish immediate recognition of the particular product in the general public.45


38. Id.

39. See, e.g., Ringling Bros., 955 F. Supp. at 605 (E.D. Va. 1997), aff’d, 170 F.3d 449 (4th Cir. 1999)
(finding acquired distinctiveness where over 70 million people each year were exposed to the mark in
connection with plaintiff’s circus); Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456 (7th Cir. 2000)
(mark was used in nationwide marketing and sales, and had been prescribed more than 240 million times to
17 million patients, totaling more than $12 billion in sales in a broad trading area); Victoria’s Cyber Secret
L.P. v. V Secret Catalogue, Inc., 161 F. Supp.2d 1339 (S.D. Fla. 2001) (mark was used in 1300 stores and
in connection with plaintiff’s catalogue, which had a circulation of 350 million per year). Cf. Friesland
Brands, B.V. v. Vietnam Nat’l Milk Co., 228 F. Supp.2d 399 (S.D.N.Y. 2002) (review of product in one
city newspaper hardly sufficient to establish fame).

40. See, e.g., Visa Int'l Serv. Ass'n v. JSL Corp., 2002 U.S. Dist. LEXIS 24779 (D. Nev. Oct. 22, 2002)
(VISA mark used in each of the fifty states and around the world, including more than 300 countries and
territories, and on the Internet); Binney & Smith v. Rose Art Indus., 60 U.S.P.Q.2d 2000 (E.D. Pa. 2001)
(establishing fame of Crayola color scheme, citing worldwide use); Hotmail Corp. v. Van Money Pie Inc.,
1998 U.S. Dist. LEXIS 10729; 47 U.S.P.Q.2d (BNA) 1020 (1998) (mark used in transmitting millions of e-
mails worldwide on a daily basis).

41. See, e.g., Gideons Int’l, Inc. v. Gideon 300 Ministries, Inc., 94 F. Supp.2d 566 (E.D. Pa. 1999) (use of
the GIDEONS mark in hotels throughout the U.S., in 75,000 churches, and in outer space via Apollo 8
favored a finding of fame).

42. See 189 F.3d 868, 879 (9th Cir. 1999).

43. See Thane Int’l v. Trek Bicycle Corp., 305 F.3d 894 (9th Cir. 2002).

44. 2000 U.S. Dist. LEXIS 6332 (S.D. Fla. 2000).



                                                      7
        In Visa Int'l Serv. Ass'n v. JSL Corp.,46 the court found that evidence of the
plaintiff’s use of the VISA mark in numerous channels of trade -- including twenty-one
million merchant locations, and on the Internet, where more than $19.5 billion in
transactions were performed using the VISA card in a twelve-month period -- all
supported the conclusion that the mark was famous.47 For a more detailed discussion of
niche fame, see infra at Section IV.

               6.     Degree of Recognition and Survey Evidence
        Although there have not been many reported dilution decisions that discuss
surveys, some courts have recognized that surveys can provide valuable evidence in
assessing the fame of a mark. In Ringling Bros., the court found that the mark THE
GREATEST SHOW ON EARTH was a famous mark under the FTDA.48 In reaching
this conclusion, the court considered a survey conducted by the plaintiff showing that
over 40% of those surveyed could complete the phrase “THE GREATEST ____ ON
EARTH” with the word “show” and associated the completed phrase with the plaintiff.49

        In Ford Motor Co. v. Ford Fin. Solutions,50 the court found that survey results not
only established the fame and secondary meaning of the FORD mark, but also established
that the defendant’s use of the mark FORD FINANCIAL SOLUTIONS diluted the
famous FORD mark because the results showed that consumers were likely to associate
the defendant’s services with the plaintiff.51 Other courts have encouraged plaintiffs to
use survey evidence in dilution cases, cautioning that, in the absence of such evidence,
the court might not be able to conclude that the mark at issue has achieved the high
degree of distinctiveness required to find fame.52



45. Id.

46. 2002 U.S. Dist. LEXIS 24779 (D. Nev. Oct. 22, 2002).

47. Id. See also Binney & Smith v. Rose Art Indus., 60 U.S.P.Q.2d 2000 (E.D. Pa. 2001) (establishing fame
of Crayola color scheme, used in a wide range of trade channels).

48. See 170 F.3d at 449. The court found, however, that the famous mark was not diluted because there
was no evidence of actual harm to the selling power of the mark. Id.


49. Id.

50. 103 F. Supp.2d 1126 (N.D. Iowa 2000).

51. Id. But see Gateway v. Companion Prods., 68 U.S.P.Q.2d (BNA) 1407 (Dist. S.D. 2003) (although a
consumer survey showed fame and that a significant portion of the public associated defendant’s product
with plaintiff, survey evidence was not sufficient to establish actionable dilution because it did not establish
an actual loss of selling power of the mark).

52. See, e.g., Thane Int’l v. Trek Bicycle Corp., 305 F.3d 894 (9th Cir. 2002) (encouraging use of surveys
to show recognition among the public); TCPIP Holding Co., Inc. v. Haar Communications Inc., 244 F.3d
88 (2d Cir. 2001) (absence of consumer surveys and press accounts, despite evidence of $280 million in
sales from 228 stores operating in 27 states, and tens of millions of dollars in advertising expenditures, led


                                                       8
        To support a finding of fame, a plaintiff must, at a minimum, establish that its
mark is well-known in its own market. In Washington Speakers Bureau, Inc. v. Leading
Auths., Inc.,53 the court, finding that the plaintiff’s mark would not be known by those
who were unfamiliar with the speaker’s bureau market, and would not be famous among
even the plaintiff’s own inexperienced customers, determined, that the mark was not
famous.54 Courts also have allowed market studies or brand surveys to be used to
establish the degree of recognition of a mark, although such studies may be of limited
value depending on the groups that are surveyed. In Visa Int'l Serv. Ass'n, the court
found that the VISA mark had a high level of recognition based on an NOP Research
Group survey showing that 99% of U.S. consumers were aware of the VISA brand of
payment cards.55 Additionally, the plaintiff submitted a study entitled "The World's
Greatest Brands" by Interbrand, which ranked VISA as the 14th top brand in the world
and the 17th strongest brand on the Internet in a survey of consumers in the United
States.56 However, in Avery Dennison, the Ninth Circuit was not persuaded by the
plaintiff’s market studies, noting that the market research studies submitted did not
evaluate fame of the marks beyond consumers of the plaintiff’s products and similar
goods.57

        In addition to surveys, evidence of cultural impact also can be a strong indicator
of fame. For example, in Binney & Smith v. Rose Art Indus.,58 the court found that the
high degree of recognition associated with the plaintiff’s mark was evidenced, in part, by
use of the mark on a commemorative postage stamp.59

             7.       Nature and Extent of Use of Similar Marks
       Evidence of extensive third party use of similar marks generally will be
considered strong evidence that a mark is not famous.60 However, evidence of third party

court to determine plaintiff failed to make an adequate showing of fame); I.P. Lund Trading ApS v. Kohler
Co., 163 F.3d 27 (1st Cir. 1998) (encouraging use of surveys).

53. 33 F. Supp. 2d. 488 (E.D. Va. 1999).

54. Id.

55. See 2002 U.S. Dist. LEXIS 24779, at *23 (D. Nev. Oct. 22, 2002).

56. Id.

57. See 189 F.3d 868, 879 (9th Cir. 1999).

58. 60 U.S.P.Q.2d 2000 (E.D. Pa. 2001).

59. Id.

60. See, e.g., Playboy Enters., Inc. v. Netscape Communications Corp., No. 00-56648, 00-56662 (9th Cir.
2004) (granting summary judgment, holding that a genuine issue of material fact existed on the issue of
fame where defendants introduced evidence of 40 third-party registrations for plaintiff’s marks and
hundreds of uses of the marks in company names and plaintiff rebutted this evidence); Avery Dennison
Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999) (the two marks were used commonly by third parties and
such widespread use indicated that the marks were not famous for the goods or services of just one
business); Michael Caruso & Co. v. Estafan Enters, Inc., 994 F. Supp. 1454 (S.D. Fla.), aff’d without dec.,


                                                     9
use may not be persuasive if the third party use is minimal and the plaintiff has made a
substantial showing on other fame factors.61 For example, in Visa Int'l Serv. Ass'n,
although the defendant submitted evidence of the mark being used by a tire company and
a golf club manufacturer, the court found that there was no evidence that these third party
brands were well-known, or even marginally well-known.62 The court also agreed with
the plaintiff that the survey evidence demonstrated that the VISA mark was a famous
mark, notwithstanding the existence of any third-party use.63

                8.      Whether the Mark is Registered
        Many courts have recognized that a plaintiff’s trademark registration for its mark
lends support to the argument that the mark is famous.64 Indeed, even pending
applications may be given evidentiary weight favoring fame.65 In addition, courts often
cite to the fact that a mark is not registered in declining to find the mark famous.66 In
fact, the failure to register a putatively famous mark can be dispositive of the fame


166 F.3d 353 (11th Cir. 1998) (holding that extensive third party use of the mark BONGO undermined
plaintiff’s claim that the mark was famous); Sigma Chi Fraternity v. Sethscot Collection, 2000 U.S. Dist.
LEXIS 6332 (S.D. Fla. April 7, 2000) (holding that the fact that the terms “Sigma” and “Chi” were widely
used by third parties in connection with similar services undermined plaintiff’s argument that the mark
SIGMA CHI was distinctive); Syndicate Sales, Inc. v. Hampshire Paper Corp., 2000 WL 1428665 (S.D.
Ind. 2000) (third-party use of features similar to plaintiff’s claimed trade dress weighed against finding
fame); Washington Speakers Bureau, Inc. v. Leading Auths., Inc., 33 F. Supp.2d. 488 (E.D.Va. 1999)
(noting a number of third parties using similar marks).

61. See, e.g., Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456 (7th Cir. 2000) (noting no evidence of
third-party use of entire mark); Binney & Smith v. Rose Art Indus., 60 U.S.P.Q.2d 2000 (E.D. Pa. 2001)
(third party use of similar color schemes was neither widespread nor sufficiently lengthy to generate
significant sales).

62. See 2002 U.S. Dist. LEXIS 24779 (D. Nev. Oct. 22, 2002). See also Gateway v. Companion Prods., 68
U.S.P.Q.2d (BNA) 1407 (Dist. S.D. 2003) (use by TuCows of a similar “cow spot” design did not defeat a
finding that Gateway’s cow spot mark was famous).

63. Id.

64. See, e.g., Times Mirror Magazines, Inc. v. Las Vegas Sports News, L.L.C., 212 F.3d 157 (3d Cir. 2000)
(finding niche market fame for THE SPORTING NEWS based in part on registration obtained in 1886);
Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999) (plaintiff’s marks had been registered
since 1963 and 1908); Graduate Mgmt. Admission Council v. RVR Narasimha RAJU, d/b/a
Gmatplus.com, No. CIV.A.02-581-A (E.D. Va. 2003) (several registrations); Cable News Network L.P. v.
CNNEWS.COM, No. 00-2022-A (E.D. Va. 2001) (several registrations); Binney & Smith v. Rose Art
Indus., 60 U.S.P.Q.2d 2000 (E.D. Pa. 2001) (colors specifically claimed in federal registration); Ringling
Bros.-Barnum & Bailey Combined Shows Inc. v. Utah Div. of Travel Dev., 955 F. Supp 605 (E.D. Va.
1997) (mark federally registered); America Online Inc. v. LCGM, Inc., 46 F. Supp.2d 444 (E.D. Va. 1998)
(mark federally registered).

65. See, e.g., Deborah Heart and Lung Center v. Children of the World Found., Ltd., 99 F. Supp.2d 481 (D.
N.J. 2000) (acknowledging pending application for federal registration).

66. See, e.g., Washington Speakers Bureau, Inc. v. Leading Auths., Inc., 33 F. Supp. 2d 488 (E.D. Va.
1999) (mark not federally registered); Gateway 2000, Inc. v. Gateway.com, Inc. & Alan B. Clegg, No.
5:96CV1021 (E.D.N.C. 1997) (no registration for precise mark at issue; relief denied).


                                                     10
inquiry.67

               9.     Other Factors
        Some courts have considered the revenue generated by a mark in determining
whether the mark is famous, incorporating this discussion into their analyses of the
advertising and promotion of the mark. When courts have considered this factor in
reaching the conclusion that a mark is famous, the sales or revenue figures of record
typically have been substantial, often in the millions of dollars.68

          B.     Summary of the Fame Factors by Circuit

                        1.      First Circuit
        In I.P Lund Trading ApS, the court examined what constitutes a famous mark
under the FTDA. In finding that the trade dress of the plaintiff’s faucet design had not
achieved the level of fame that Congress had intended, the First Circuit specifically noted
that the product design was not registered, was not inherently distinctive, and was not
particularly strong or well-publicized. The court also noted that the plaintiff had not
presented any survey evidence to establish fame, and that there was no basis for the court
to take judicial notice of the mark’s fame.69

                        2.     Second Circuit
        Notably, the Second Circuit has specifically reserved protection under the FTDA
for marks that are inherently distinctive. In TCPIP Holding Co., Inc. v. Haar
Communications Inc.,70 the plaintiff provided evidence of $280 million in sales from 228
stores in twenty-seven states, as well as evidence of tens of million of dollars in
advertising expenditures over a decade. Based in part on the plaintiff’s failure to submit
surveys or other substantiation for its claim that it had used the mark for thirty years, the
court held that the plaintiff had failed to demonstrate that the mark was famous.71 The
court further held that inherent distinctiveness is required for protection under the FTDA,
and that acquired distinctiveness was not sufficient to afford a mark protection under the




67. See Hershey Foods Corp. v. Mars, Inc., 998 F.Supp. 500 (M.D. Pa. 1998) (noting that “[a] person
would be expected to register a famous mark”).

68. See, e.g., Gateway v. Companion Prods., 68 U.S.P.Q.2d (BNA) 1407 (Dist. S.D. 2003) (11,500 boxes
bearing the mark shipped daily); Victoria’s Cyber Secret v. V Secret Catalogue, Inc., 161 F. Supp.2d 1339
(S.D. Fla. 2001) (annual product sales approaching $1 billion per year); Ringling Bros.-Barnum & Bailey
Combined Shows Inc. v. Utah Div. of Travel Dev., 955 F. Supp 605 (E.D. Va. 1997) ($103 million derived
per year from goods and services bearing the mark).

69. See 163 F.3d 27 (1st Cir. 1998). See also, Hasbro Inc. v. Clue Computing, Inc., 232 F.3d 1 (1st Cir.
2000) (holding that plaintiff’s CLUE mark was not famous).
70. 244 F.3d 88 (2d Cir. 2001). See also Deere & Co. v. MTD Holdings, Inc., 2003 U.S. Dist. LEXIS
19161 (S.D.N.Y. October 27, 2003) (plaintiff’s mark consisting of colors yellow and green for lawn care
products was not inherently distinctive, and thus ineligible for protection under the FTDA).

71. Id.


                                                    11
statute.72

                       3.       Third Circuit
       Courts in the Third Circuit generally consider each of the eight factors set forth in
the FTDA in determining fame.73 The factors need not be applied strictly, however, nor
must a prevailing plaintiff or a lower court address them each.74 Additionally, niche
market fame provides a basis for relief in dilution actions in the Third Circuit.75

                       4.       Fourth Circuit
         The Fourth Circuit generally has not required that a plaintiff make a showing on
all of the fame factors set forth in the FTDA. In Ringling Bros., the court considered the
majority of the statutory fame factors in determining whether THE GREATEST SHOW
ON EARTH qualified as a famous mark, namely: (1) survey results; (2) evidence
showing that over 70 million people a year were exposed to the mark; (3) evidence
showing that the mark had achieved acquired distinctiveness; (4) the fact that the mark
had been federally registered; (5) use of the mark since the 1870s; (6) extensive publicity
and promotion of the mark, and; (7) $103 million in annual revenues generated in
connection with the mark.76

        However, courts in the Fourth Circuit have considered as few as two or three
statutory factors in reaching the conclusion that a mark is famous. For example, in
Graduate Management Admission Counsel v. RVR Narashimah RAJU d/b/a
Gmatplus.com,77 the court found that the mark GMAT was famous based on evidence
that the mark had been used since 1975, that the plaintiff had spent significant sums of
money to advertise and promote the mark, and that the mark was the subject of a number
of federal trademark registrations.78



72. Id.

73. See, e.g., Pocono Int’l. Raceway, Inc. v. Pocono Mountain Speedway, Inc., 171 F. Supp.2d 427 (M.D.
Pa. 2001) (addressing factors used to determine fame).

74. See Times Mirror Magazines, Inc. v. Las Vegas Sporting News, L.L.C., 212 F.3d 157 (3d Cir. 2000)
(acknowledging flexibility in application of fame factors).

75. See, e.g., Wawa, Inc. v. Haha, 1996 U.S. Dist. LEXIS 11494, at *5 (E.D. Pa. Aug. 8, 1996).

76. See 955 F. Supp. 605 (E.D. Va. 1997), aff’d, 170 F.3d 449 (4th Cir. 1999). The court did not,
however, require that the plaintiff submit evidence of the number of third parties using the mark before it
found the mark to be famous.

77. No. Civ. A.02-581-A (E.D. Va 2003).

78. Id. See also America Online Inc. v. LCGM, Inc. 46 F. Supp. 2d 444 (E.D. Va. 1998) (considering two
factors, distinctiveness and federal registration, before concluding that the mark AOL was famous); Aztar
Corp. v. MGM Casino, No. 00-833-A (E.D. Va. 2001) (holding that long use and extensive sales,
advertising and promotion of the TROPICANA mark for casino services in the U.S. and abroad made the
mark famous); Playboy Enters., Inc. v. Asiafocus Int’l Inc., No. Civ. A. 97-734-A (E.D. Va. 1998) (holding


                                                     12
        A showing of only one of the statutory factors, however, has not been sufficient to
support a finding of fame in the Fourth Circuit. In Washington Speakers Bureau, Inc. v.
Leading Auths., Inc.,79 the court declined to find that the plaintiff’s mark was famous,
noting that, although the plaintiff had demonstrated that it had spent considerable money
to advertise and promote its service mark, the mark was not federally registered, would
not be known by those outside the plaintiff’s market, might not be well-known by some
of the plaintiff’s own inexperienced customers, and that many third parties were using
similar marks for similar services.80

                       5.      Fifth Circuit
        There are few cases in the Fifth Circuit that have addressed the issue of what
constitutes a famous mark under the FTDA. In each of the two Fifth Circuit decisions
that have addressed the issue of dilution, the court declined to find that the plaintiff’s
mark had been diluted. In Westchester Media v. PRL USA Holdings, Inc.,81 the issue of
fame was not contested by the defendant, but the court found that plaintiff could not
establish an actual loss of selling power of its famous POLO mark.82 However, in
Advantage Rent-A-Car, Inc., the court found that the plaintiff’s mark was descriptive and,
therefore, not famous.83 In a few cases, district courts in the Fifth Circuit have found a
plaintiff’s mark to be famous after the plaintiff had made a substantial showing on a
number of the eight statutory fame factors.84

                           6.          Sixth Circuit

         The Sixth Circuit has noted that, “distinctiveness in a mark is a characteristic
quite different than fame.”85 The standard for fame required to succeed in a dilution
claim is more rigorous than the distinctiveness standard required for infringement in this
circuit.86 Courts in the Sixth Circuit have looked to the FTDA factors when assessing


that long use of the PLAYBOY and PLAYMATE marks and extensive advertising and promotion of the
marks were such that the fame of those marks could not reasonably be disputed).

79. 33 F. Supp.2d 488 (E.D. Va. 1999).

80. Id.

81. 214 F.3d at 658 (5th Cir. 2000).

82. Id.

83. See 238 F.3d. 378 (5th Cir. 2001).

84. See, e.g., Bayer Corp. v. Custom School Frames, LLC, 259 F. Supp.2d 503 (E.D. La. 2003);
Sourtheastern Louisiana Entertainment v. Hollywood Entertainment Corp., 2000 U.S. Dist. LEXIS 1329
(E.D. La. 2000).

85. See V Secret Catalogue, Inc. v. Moseley, 259 F.3d 464, 469 (6th Cir. 2001).

86. See e.g., Libbey Glass, Inc. v. Oneida Ltd., 61 F. Supp.2d 700 (N.D. Ohio 1999) (denying summary
judgment because genuine issue of fact existed as to distinctiveness and fame of plaintiff’s glassware trade
dress).


                                                     13
whether a mark is famous.87 Applying these factors, these courts have found marks to be
famous on the basis of both inherent distinctiveness88 and acquired distinctiveness.89

                       7.     Seventh Circuit
        Courts in the Seventh Circuit typically have applied the FTDA’s eight factor test
to determine whether a mark is famous. While no mark in this circuit has achieved niche
fame, courts in the Seventh Circuit do recognize niche market fame as a basis for
recovery. See infra at Section IV.

                      8.      Eighth Circuit
       There are only two decisions in the Eighth Circuit that address whether a mark is
famous under the FTDA. In each of those cases, the plaintiff made a substantial showing
on many of the statutory factors and put forth survey evidence, establishing that there was
widespread consumer recognition of the mark.90

                       9. Ninth Circuit
        Generally speaking, courts in the Ninth Circuit have applied the eight factor
statutory test to determine if a mark is famous under the FTDA and have required a
substantial showing on many of the factors before finding fame.91 In the seminal case,

87. See, e.g., Big Boy Rests. v. Cadillac Coffee Co., 238 F. Supp.2d 866 (E.D. Mich. 2002); Big Ten Conf.
v. Big Ten Worldwide Concert & Sport, 2000 U.S. Dist. LEXIS 2238 (E.D. Mich. 2000); American
Express Corp. v. CFK, Inc., 947 F. Supp. 310 (E.D. Mich. 1996).

88. See, e.g., Big Ten Conf. v. Big Ten Worldwide Concert & Sport, 2000 U.S. Dist. LEXIS 2238 (E.D.
Mich. 2000) (finding plaintiff’s BIG TEN mark to be inherently distinctive and famous).

89. See, e.g., American Express Corp. v. CFK, Inc., 947 F. Supp. 310 (E.D. Mich. 1996) (holding that all
eight FTDA factors weighed in favor of finding plaintiff’s DON’T LEAVE HOME WITHOUT IT marks to
be famous).

90. See Gateway v. Companion Products, 68 U.S.P.Q.2d (BNA) 1407 (Dist. S.D. 2003); Ford Motor Co. v.
Ford Fin. Solutions, 103 F. Supp. 1126 (N.D. Iowa 2000).

91. See, e.g., Visa Int’l Serv. Ass’n v. JSL Corp., 2002 U.S. Dist. LEXIS 24779 (D. Nev. Oct. 22. 2002),
rev’d on other grounds, Visa Int’l Serv. Ass’n v. JSL Corp., 2003 U.S. App. LEXIS 26129 (9th Cir. Dec.
22, 2003) (finding that all eight factors, taken together, strongly supported the conclusion that the VISA
mark was truly prominent and renowned and therefore, famous under the statute); Panavision Int’l, L.P. v.
Toeppen, 945 F. Supp. 1296 (N.D. Ca. 1996), aff’d, 141 F.3d 1316 (9th Cir. 1998) (finding the
PANAVISION mark famous and citing federal registration, inherent distinctiveness, use since 1954, and
advertising to general public and to the trade); Hotmail Corp. v. Van Money Pie Inc., 1998 U.S. Dist.
LEXIS 10729; 47 U.S.P.Q.2d (BNA) 1020 (N.D. Ca. April 16, 1998) (holding that plaintiff presented
sufficient evidence to establish that its HOTMAIL mark was famous after showing that the mark was
distinctive, that plaintiff had spent $10 million in marketing and promoting the mark, and had used the
mark since 1996 in connection with online services and in millions of e-mails transmitted daily); Lozano
Enters. v. La Opinion Publ’g Co., 1997 U.S. Dist. LEXIS 20372; 44 U.S.P.Q.2d (BNA) 1764 (C.D. Ca.
July 29, 1997) (finding that plaintiff’s LA OPINION mark was famous based on 71 years of use, federal
registration, circulation of 100,000, the largest circulation of Spanish language paper newspaper in the
U.S., and noting that awards in the industry contributed to finding fame); Toys “R” Us v. Akkaoui, 1996
U.S. Dist. LEXIS 17090; 40 U.S.P.Q.2d (BNA) 1836 (C.D. Ca. Oct. 29, 1996) (finding that plaintiff had
established that TOYS “R” US and KIDS “R” US marks were famous based on continuous use and
national advertising since 1960 and 1983, respectively, had acquired strong degree of distinctiveness due to


                                                     14
Avery Dennison, the Ninth Circuit declined to find that the marks AVERY and
DENNISON were famous. The court refused to find fame despite the plaintiff’s showing
that it had used the marks at issue since 1930s and 1800s, respectively, that the marks
were federally registered, that the plaintiff had spent over $5 million per year advertising
its products and had sold approximately $3 billion of trademarked products per year, and
that the marks were not widely used by third parties.92 Based on these facts, the court
concluded that, although these surname marks had acquired distinctiveness through
secondary meaning, the plaintiff had not proven that the marks were “famous” for
dilution purposes.93

                    10.    Tenth Circuit
      There are no decisions in the Tenth Circuit discussing what constitutes a famous
mark under the FTDA.

                        11.      Eleventh Circuit
        A substantial showing on multiple FTDA factors generally has been held
sufficient to establish fame in the Eleventh Circuit. In Victoria’s Cyber Secret L.P. v. V
Secret Catalogue, Inc.,94 the district court found that the mark VICTORIA’S SECRET
was famous based on the fact that the mark was arbitrary, had been used since 1982, was
used in connection with 1300 stores and 350 million catalogues, and had annual sales
approaching $3 billion.95 However, extensive advertising or sales associated with a mark
is generally not, by itself, sufficient to establish that the mark is famous.96 Moreover, in
the Eleventh Circuit, evidence of extensive third party use of the mark will generally
defeat a claim by the plaintiff that its mark is famous.97

promotional activity, and were the subject of federal trademark registrations and enforcement efforts that
successfully prevented third parties from using same or similar marks).

92. 189 F.3d 898 (9th Cir. 1999).

93. Id.

94. 161 F. Supp.2d 1339 (S.D. Fla. 2001).

95. Id. See also Nike, Inc. v. Variety Wholesalers, Inc., 274 F. Supp.2d 1352 (S.D. Ga. 2003) (holding that
Nike’s marks were inherently distinctive and federally registered, had been used for a long time, and were
the subject of extensive advertising, and noting lack of third party use).

96. See, e.g., Alltel Corp. v. Actel Intergraded Communications, Inc., 42 F. Supp.2d 1265 (S.D. Ala. 1999)
(holding that substantial advertising was not sufficient to establish fame of the ALLTEL mark). See also
Corbitt Mfg. Co., Inc. v. GSO America, Inc., 197 F. Supp.2d 1368 (S.D. Ga. 2002) (holding that, aside
from quoting sales figures, plaintiff had not provided evidence of the degree of recognition of the mark);
Carnival Corp. v. SeaEscape Casino Cruises, Inc., 74 F. Supp.2d 1261 (S.D. Fla. 1999) (holding that,
extensive advertising and sales were not sufficient to establish fame of FUN SHIP mark).

97. See, e.g., Michael Caruso & Co. v. Estafan Enters, Inc., 994 F. Supp. 1454 (S.D. Fla.), aff’d without
dec., 166 F.3d 353 (11th Cir. 1998) (holding that extensive third party use of the mark BONGO
undermined plaintiff’s claim that the mark was famous); HBP, Inc. v. American Marine Holdings, Inc., 290
F. Supp.2d 1320 (M.D. Fla. 2003) (citing widespread use of the mark DAYTONA in holding that the mark
was not famous); Corbitt Mfg. Co., Inc. v. GSO America, Inc., 197 F. Supp.2d 1368 (S.D. Ga. 2002)


                                                     15
                    12.     Federal Circuit
      There are no decisions in the Federal Circuit discussing what constitutes a famous
mark under the FTDA.



III.     FAME ASSUMED, UNCONTESTED OR FOUND WITHOUT ANALYSIS

        Occasionally, courts have found that a mark is famous without any analysis.
These cases generally fall into three categories: (1) cases in which the court, in essence,
takes judicial notice of the fame of the mark; (2) cases in which the defendant does not
contest the fame of the mark; and (3) cases in which the court assumes fame for the
purposes of a motion.

        When courts have taken judicial notice that a mark is famous, it often has been
because the mark is a household name.98 For example, in Caterpillar Inc. v. Walt Disney
Co.,99 although ultimately denying the plaintiff’s claim, the court stated “[t]here is no
question in this case that the Caterpillar marks are famous.”100 In other instances, courts
have found marks to be famous because the defendant did not contest fame.101 Finally,

(citing widespread use of similar descriptions by competitors in holding that plaintiff’s NO FLOAT mark
was not famous); Sigma Chi Fraternity v. Sethscot Collection, 2000 U.S. Dist. LEXIS 6332 (S.D. Fla.
April 7, 2000) (holding that the fact that the terms “Sigma” and “Chi” were widely used by third parties in
connection with similar services undermined plaintiff’s argument that the mark SIGMA CHI was
distinctive); Carnival Corp. v. SeaEscape Casino Cruises, Inc., 74 F. Supp.2d 1261 (S.D. Fla. 1999)
(holding that extensive third party use of the word “fun” in marks for similar services made it unlikely that
the plaintiff’s FUN SHIP mark would be considered famous).

98. See, e.g., Virtual Works, Inc. v. Network Solutions, Inc., 106 F. Supp.2d 845 (E.D. Va. 2000) (finding
that defendant’s VW mark was famous, but not specifying how it arrived at that conclusion) aff’d on other
grounds, Virtual Works Inc. v. Volkswagen of America, Inc., 238 F.3d 264 (4th Cir. 2001); Nabisco Inc.
v. Pf Brands Inc., 191 F.3d 208 (2d Cir. 1999) (affirming injunction, noting that it was “not disputed . . .
that Pepperidge Farm’s Goldfish constitutes a famous mark . . ..”); Sara Lee Corp. v. American Leather
Prods., Inc., 1998 WL 433764 (N.D. Ill. 1998) (acknowledging factors, but determining that registered
element of trade dress was famous without discussion).

99. 287 F. Supp.2d 913 (C.D. Ill. 2003).

100. Id. However, in other cases, courts have found marks that are not obviously household names, such as
ADVANTAGE, to be famous without analysis. See, e.g., Bayer Corp. v. Custom School Frames LLC, 259
F. Supp.2d 503 (E.D. La. 2003) (assuming plaintiff’s ADVANTAGE mark to be famous); NBBJ East Ltd.
P’shp v. NBBJ Training Acad. Inc., 201 F. Supp.2d 800 (S.D. Ohio 2001) (finding that plaintiff’s NBBJ
mark was “famous by and distinctive in the architectural, design and construction communities”);
Portionpac Chem. Corp. v. Sanitech Sys., Inc., 210 F. Supp.2d 1302 (M.D. Fla. 2002) (finding that
plaintiff’s trade dress mark was famous without analysis, but holding that mark was not diluted because the
trade dress was “functional” and “not protectable”); Baylor Univ. v. International Star, Inc., 2001 U.S. Dist.
LEXIS 23619 (W.D. Tex. 2001) (assuming plaintiff’s mark was famous); Aztar Corp. v. MGM Casino and
Tropicanacasino.com, No. 00-833-A. (E.D. Va. 2001) (TROPICANA for a casino found to be famous
without discussion in granting default judgment).

101. See, e.g., Kellogg Co v. Toucan Golf, Inc., 337 F.3d 616 (6th Cir. 2003) (issue of fame not in dispute
and required no discussion); AutoZone, Inc. v. Tandy Corp., 373 F.3d 786 (6th Cir. 2004) (neither party


                                                      16
courts occasionally have found that a mark is famous for the purposes of a motion.102
Often in such cases, courts have assumed that a mark is famous and then denied the
plaintiff’s dilution claim, finding that the plaintiff failed to prove dilution of the mark.103



IV.     NICHE FAME

        The FTDA protects only “famous” trademarks. However, courts have not settled
on the degree of fame required for such protection. Currently, most federal courts have
adopted the niche market theory of fame, which allows trademark owners to protect

disputed fame of AUTOZONE mark); V Secret Catalogue, Inc. v. Moseley, 259 F.3d 464 (6th Cir. 2001)
(fame of VICTORIA’S SECRET mark not disputed); Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d
456 (7th Cir. 2000) (defendant did not contest fame of plaintiff’s PROZAC mark); Westchester Media v.
PRL USA Holdings, Inc., 214 F.3d 658 (5th Cir. 2000) (fame of POLO mark not disputed); Federal
Express Corp. v. Federal Espresso, Inc., 201 F.3d 168 (2d Cir. 2000) (defendant did not contest fame of
FEDERAL EXPRESS mark); Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of
Travel Dev., 955 F. Supp. 605 (E.D. Va. 1997) (court found facts reflecting, and defendant did not contest,
that Ringling’s GREATEST SHOW ON EARTH mark was famous); Cable News Network L.P. v.
CNNEWS.COM, No. 00-2022-A (E.D. Va. 2001) (undisputed trademark rights); Pinehurst, Inc. v. Wick,
265 F. Supp.2d 424 (M.D.N.C. 2003) (finding no dispute that plaintiff’s PINEHURST marks are famous,
but not elaborating on what factors were being used to reach that conclusion); America Online Inc.,
Plaintiff v. IMS, No. Civ. A. 98-0011-A (E.D. Va. Nov. 20, 1998) (AOL mark deemed famous, but
apparently not disputed); AT&T Corp. v. ATT&T, Inc., 2002 WL 31500934 (D. Del. 2002) (defendant did
not dispute fame of AT&T mark); Pharmacia Corp. v. Alcon Labs., Inc., 201 F. Supp.2d 335 (D. N.J. 2002)
(defendant did not contest fame of XALATAN mark among ophthalmologists); Travelodge Hotels, Inc. v.
Coutoules, 1999 WL 314166 (D. N.J. 1999) (defendant, holdover licensee, did not contest fame of
plaintiff’s mark).

102. See, e.g., Avlon Indus. v. Robinson, 2003 WL 22025004 (N.D. Ill. 2003) (assuming fame of AVLON,
KERACARE, and AFFIRM marks); Allstate Ins. Co. v. Mathison, 2002 WL 1396951 (N.D. Ill. 2002)
(assuming fame of plaintiff’s ALLSTATE mark).

103. See, e.g., Wham-O v. Paramount Pictures Corp., 286 F. Supp.2d 1254 (N.D. Ca. 2003) (assuming
SLIP N’ SLIDE to be famous for the purposes of a motion for TRO, but finding defendant’s use of the
mark did not constitute dilution by tarnishment or blurring); World Wrestling Fed’n Entertainment, Inc. v.
Big Dog Holdings, Inc., 280 F. Supp.2d 413 (W.D. Pa. 2003) (assuming fame for purposes of motion, but
ultimately denying dilution claim); Eco Mfg. LLC v. Honeywell Int’l, Inc., 2003 WL 21524860 (S.D. Ind.
2003) (assuming fame for purposes of motion, but denying dilution claims); Strick v. Strickland, 162 F.
Supp.2d 372 (E.D. Pa. 2001) (assuming fame for purposes of motion, but granting defendant’s motion for
summary judgment on dilution issue); American Cyanamid Co. v. Nutraceutical Corp., 54 F. Supp.2d 379
(D. N.J. 1999) (assuming fame for purposes of motion, but finding marks too dissimilar to support claim of
dilution); World Gym Licensing , Ltd. v. Fitness World, Inc., 47 F. Supp.2d 614 (D. Md. 1999) (assuming
that plaintiff’s mark was famous, but finding that plaintiff could not prevail because it failed to submit
“hard proof of actual economic harm” as required by Ringling Bros.); Blue Cross and Blue Shield Ass’n v.
American Express Co., 1999 WL 1044825 (N.D. Ill. 1999) (describing plaintiff’s mark as famous without
discussion, not addressing concept of fame in rejecting dilution claims); Snap-On Tools Co. v. C/Net, Inc.,
American Dairy Queen Corp. v. New Line Productions, 35 F. Supp.2d 727 (D. Minn. 1998); National
Board of Certification in Occupational Therapy v. American Occupational Therapy Ass’n, 24 F. Supp.2d
494 (D. Md. 1998) (assuming that mark was famous, but denying summary judgment, finding factual
dispute about whether selling power of the mark had been affected); 1997 WL 33483145 (N.D. Ill. 1997)
(assuming fame for purposes of motion for preliminary injunction, but denying dilution claim).



                                                    17
trademarks that are not necessarily “household” names if they can prove fame in a
particular consumer market or localized area.104 Under the niche market theory of fame,
courts have given FTDA protection to trademarks that are famous only in discrete
markets, and relatively unknown outside of those markets. In applying this theory, courts
have looked specifically at whether niche fame within a limited geographic area or a
specialized market segment supports a claim of dilution occurring within that niche. In
order to apply the niche market theory, courts have required that both the plaintiff and
defendant be in the same consumer market.

         A.       Niche Fame in a Specialized Market Segment

       There are several decisions that illustrate how courts have looked at niche fame
within a specialized market segment.
        The Third Circuit affirmed entry of a preliminary injunction sought by the
publisher of The Sporting News against use of Las Vegas Sporting News as the title of a
sports-betting publication. In that case, the circuit court affirmed the district court’s
finding of niche market fame where the mark had a high degree of distinctiveness within
a market and where the plaintiff and the defendant operated within or alongside that
market. The court also held that THE SPORTING NEWS mark was famous based on the
following facts: (1) the mark had been federally registered; (2) the mark had been used
as a banner headline since 1886 and as a trademark throughout the United States and
Canada and on the Internet; (3) the mark had been advertised on television, by direct mail
promotions and on the radio; and (4) in recent years, millions of dollars had been spent
on improving the magazine.105

        In a similar analysis, the Seventh Circuit applied the niche market theory of fame,
but came up with a different result based on the eight fame factors set forth in the FTDA.
In Syndicate Sales, Inc. v. Hampshire Paper Corp.,106 the district court decided that
Syndicate Sales’ floral basket design was not famous and granted the defendant’s motion
for summary judgment, which was on remand for a determination of fame within a niche
market. The Seventh Circuit analyzed several factors in reaching the conclusion that the
plaintiff’s design was not famous, some weighing against fame and some in favor.

104. The niche market theory of fame has been accepted by courts in the Third, Fourth, Fifth, Sixth,
Seventh and Ninth Circuits and rejected by courts in the Second, Eighth and Eleventh Circuits. Courts in
the First, Tenth, and Federal Circuits have not specifically addressed the niche market theory. See infra at
IV.A-C.

105. See Times Mirror Magazines, Inc. v. Las Vegas Sports News, L.L.C., 212 F.3d 157, 166 (3d Cir.
2000). There was a lengthy dissent in Times Mirror Magazine, arguing against a niche market theory of
fame and questioning the grant of preliminary injunction without evidence of consumer recognition of the
plaintiff’s mark within the defendant’s channel of trade. Id. The dissent argued that a relatively small
circulation (as compared to the circulation of major publications), a lack of evidence regarding advertising
expenditures and scope, commonality of the terms SPORTING and NEWS, and possible third party uses
further undercut the finding of fame. Id.

106. 2000 WL 1428665 (S.D. Ind. 2000).



                                                     18
Specifically, the court found that: (1) use and advertisement of the design for forty years
weighed in favor of fame; (2) the design had been promoted and sold throughout the
U.S., which weighed in favor of fame; (3) the limited channels of trade (i.e., the
wholesale/retail floral product market) had to be measured in conjunction with the
remaining fame factors; (4) limited evidence of recognition within the niche market
weighed against fame; (5) third-party use of design features similar to the plaintiff’s
design weighed against fame; and (6) the lack of a trademark registration for the
plaintiff’s design weighed against fame.107

        In Simon Property Group, L.P. v. mySimon, Inc.,108 the court again relied on the
niche market theory of fame and again found the evidence insufficient to establish fame,
even within a niche market. In that case, the court held that the SIMON mark was not
famous because, as a common name, the mark had little distinctiveness.109 The court also
noted that the SIMON mark was used by third parties in a wide range of markets, that
survey evidence showed only a small number of consumers were familiar with the
SIMON mark, and that promotional efforts had failed to generate fame sufficient to
warrant protection.110

       Courts in the Fourth, Fifth and Sixth Circuits also have adopted the niche market
theory of fame and have analyzed cases in terms of specialized market segments.111

       Of all the circuits that have adopted the niche theory of fame, the Ninth Circuit
seems to have taken the narrowest approach. In Trek Bicycle, the court begrudgingly
applied the niche theory of fame, acknowledging its earlier ruling in Avery Dennison, in
which it held that “niche” fame within a limited geographic area or a specialized market
segment may support a claim of dilution occurring within that niche.112 However, the
Ninth Circuit ultimately held that, despite both sharing the sporting goods market,
TREK’s mobile bicycles and Thane’s elliptical orbit machines did not operate in the
same narrow market segment for purposes of niche fame. The court went on to say:

107. Id.

108. 2000 WL 1206575 (S.D. Ind. 2000).

109. Id.

110. Id.

111. See, e.g., Rhee Bros., Inc. v. Han Ah Reum Corp., No. CIV. AMD 01-1894 (D. Md. 2001) (fame
found in Asian foods market); Swix.com and Swix.net, Internet Domain Names, No. CIV. A. 99-1788-A.
(E.D. Va. March 16, 2001) (SWIX mark well known in ski market, but not found famous with meaning of
FTDA because diluting uses were not directed to the same market); Advantage Rent-A-Car, Inc. v.
Enterprise Rent-A-Car Co., 238 F.3d 378 (5th Cir. 2001) (defendant Enterprise was not required to prove
fame beyond its own market, applying Seventh Circuit standard from Syndicate, 192 F. 3d 633); NBBJ East
Ltd. P’shp v. NBBJ Training Acad., Inc., 20 F. Supp. 2d 800 (S.D. Ohio 2001) (finding plaintiff’s mark
famous “in the architectural, design and construction communities”); Libbey Glass, Inc. v. Oneida, Ltd., 61
F. Supp.2d 700 (N.D. Ohio 1999) (in denying summary judgment, court noted that plaintiff’s trade dress
must be famous in channels used by plaintiff and defendants).
112. See 305 F.3d 894 (9th Cir. 2002).


                                                    19
         [T]he niche fame concept must focus on highly specialized market
         segments with an identifiable customer base. As the market segments in
         which the senior and junior products operate become less specialized and
         less unitary, the notion that participants in those diverse markets will
         necessarily recognize and form mental associations with an established
         mark becomes increasingly questionable.113

        In other words, the Ninth Circuit found that consumers within the niche must be
likely to make associations between marks that the general public would not make.
Finally, the court commented on the limitation of niche fame protection, finding that
“[t]he statute protects a mark only when a mark is famous within a niche market and the
alleged diluter uses the mark within that niche.”114

           B.      Niche Fame Based on Geographical Scope

         Courts also have applied the niche theory of fame based on geographical scope.
For example, one court in the Third Circuit has held that a trademark was famous because
it was used and advertised extensively in connection with regional convenience stores for
almost ninety years, even though those stores were located in just five northeastern
states.115
           C.    Circuits that Reject Niche Fame

         Courts in three circuits -- the Second Circuit, the Eighth Circuit and the Eleventh
Circuit -- specifically have rejected the niche fame theory. Addressing the niche market
theory of fame, the Second Circuit held that a mark was not famous even where the
trademark owner had used the mark in connection with 228 retail stores in twenty-seven
states, generating over $280 million in sales and spending tens of millions of dollars in
advertising. In so holding, the court noted that it was “improbab[le] that Congress
intended to grant such outright exclusivity to marks that are famous in only a small area
or segment of the nation.”116

       In another case, a district court in the Second Circuit refused to apply the niche
market theory of fame when the plaintiff failed to demonstrate a degree of consumer

113. Id. at 909.

114. Id. (emphasis supplied).

115. See Wawa, Inc. v. Haha, 1996 U.S. Dist. LEXIS 11494, at *5 (E.D. Pa. Aug. 8, 1996). See also
Southeastern Louisiana Entertainment v. Hollywood Entertainment Corp., 2000 U.S. Dist. LEXIS 13229
(E.D. La. 2000) (finding fame and resulting dilution in the Houma area and upholding the concept of
dilution within a limited geographic scope); Rhee Bros., Inc. v. Han Ah Reum Corp., No. CIV. AMD 01-
1894 (D. Md. 2001) (finding fame across D.C., Maryland and Virginia).

116. See TCPIP Holding Co. v. Haar Communications, Inc., 244 F.3d 88, 99 (2d Cir. 2001); cf. Toro Co. v.
ToroHead, Inc., 61 U.S.P.Q.2d 1164 (T.T.A.B. 2001) (finding fame irrelevant “unless somehow the goods
or services with which the allegedly diluting mark is used are in the same market”).



                                                  20
awareness in its wine shops’ trade dress sufficient to establish fame. The plaintiff
provided no marketing studies or other indicia of consumer awareness of its trade dress,
no evidence of a nationwide advertising campaign emphasizing the trade dress, and little
evidence that the trade dress was widely known or associated by consumers with the
plaintiff, beyond a relatively narrow group of professionals in the wine and interior
design industries.117 Additionally, the plaintiff had used its trade dress for only six years,
in an area geographically limited principally to certain parts of New York, Boston and
Seattle.118 The court further noted that, although there was not a great deal of precedent
that provided guidance in determining whether a mark was "famous" for dilution
purposes, Congress likely meant to protect only those trademarks that had become
"household words," and that "it seem[ed] most unlikely that [in passing the FTDA]
Congress intended to confer on marks that have enjoyed only brief fame in a small part of
the country, or among a small segment of the population, the power to enjoin all other
users throughout the nation in all realms of commerce."119

        In The Christopher D. Smithers Found., Inc. v. St. Luke’s-Roosevelt Hospital Ctr.,
the same court confirmed that the degree of fame required for protection under the FTDA
must exist in the general marketplace, not in a niche market.120 The court went on to say
that “fame” limited to a particular channel of trade, segment of industry or service (as in
this case, where the SMITHERS mark was used solely in the alcoholism treatment field),
or geographic region, was not sufficient to show fame under the statute. In addition, the
court noted that the plaintiff’s press clippings showing that its marks had achieved some
public notice did not demonstrate sufficient widespread use of, or attention to, the marks
to show that they were truly famous.121 The court also rejected the plaintiff’s assertion
that "the marks are used throughout the United States and around the world" as
insufficient to establish a genuine issue of material fact regarding fame for purposes of
summary judgment.122

        Courts in the Eighth Circuit also have refused to apply the niche market theory of
fame. In Heidi Ott A.G. v. Target Corp.,123 the court found that the niche market theory of
fame was inconsistent with the purpose of trademark dilution laws, holding that since the
case involved directly competing products, application of the niche market theory would



117. See Best Cellars, Inc. v. Wine Made Simple, Inc., 2003 U.S. Dist. LEXIS 3958 (S.D.N.Y. March 11,
2003).

118. Id.

119. Id. (citing TCPIP Holding Co., Inc., 244 F.3d at 98).

120. See 2003 U.S. Dist. LEXIS 373 (S.D.N.Y. Jan. 13, 2003).

121. Id.

122. Id. at *17.

123. 153 F. Supp.2d 1055 (D. Minn. 2001).


                                                    21
result in an over-extension of FTDA protection and render protection under trademark
infringement law duplicative.124

    Similarly, in Caruso & Co., Inc. v. Estafan Enters., Inc.,125 a district court in the
Eleventh Circuit rejected the notion of niche market fame. In that case, the court refused
to find the plaintiff’s BONGO mark famous, noting that, although the plaintiff’s mark
“may be a distinctive mark in the junior women’s apparel market, it is not a generally
famous mark.”126

           D.       General Criticisms and Limitations of Niche Fame

         Congress explicitly limited the scope of the FTDA’s protection to “famous”
trademarks, but failed to define “fame” in the statute. Instead, the FTDA lists eight non-
exclusive factors that courts may consider when determining a trademark’s fame. Many
courts and commentators have considered the fame requirement to be stringent, creating a
high standard for trademarks to receive FTDA protection. Some of these authorities have
criticized the niche market theory of fame, arguing that that it ignores the congressional
intent that the FTDA protect only truly famous marks by allowing trademarks that are
well-known only in a particular market or across a particular region to garner protection
under the statute. These same critics also point out that markets are malleable, and that
potential plaintiffs can define niche markets in such a manner as to almost always assure
that their trademarks will be found to be famous in some niche.

         Another common criticism is that the niche market theory of fame can be used as
a tactic to avoid the more rigorous requirements of a trademark infringement claim.
Critics maintain that when courts require both parties to be competitors in the same niche
market, the real issue is consumer confusion as to the two trademarks, which should be
addressed in the context of a trademark infringement suit. In fact, the narrow definition
of market segment boundaries applied by courts considering niche fame under a dilution
analysis often resembles the comparison of goods and channels of trade applied under a
standard likelihood of confusion analysis for trademark infringement claims. Critics
assert that this comparison, combined with the requirement that marks subject to a
dilution analysis be identical, or nearly identical, can make a court’s criteria for dilution
within a niche market too close to the elements of confusion in an infringement claim,
notwithstanding that confusion is irrelevant to a dilution analysis under the FTDA. As a
result, there has been growing concern that broad application of the FTDA could create
rights-in-gross in trademarks that are neither widely famous nor create consumer
confusion.



124. Id. at 1055 (citing Viacom v. Ingram, 141 F. 3d 886 (8th Cir. 1997), in which the court held that the
dilution laws are designed to protect marks from non-competing uses).

125. 994 F. Supp. 1454 (S.D. Fla.), aff’d without dec., 166 F.3d 353 (11th Cir. 1998).

126. Id. at 1463.



                                                     22
        Even courts that currently apply the niche market theory of fame share this
concern. For example, the Ninth Circuit has stressed that dilution is a cause of action
invented and reserved for a select class of marks with such powerful consumer
associations that even non-competing uses can impinge on their value.127 As a result,
given the broad protection possible under the FTDA, and “in order not to upset the
balance in favor of over-protecting trademarks, at the expense of potential non-infringing
uses,” the Ninth Circuit has cautioned that dilution be limited to truly prominent and
renowned marks that have become “household names.”128


V.         FAME IN CYBERSQUATTING CASES

        Until November 1999, when Congress enacted the Anti-cybersquatting Consumer
Protection Act (the “ACPA”), trademark owners successfully used the FTDA to allege
that cybersquatters had "diluted" their famous trademarks. Because the mere reservation
of a domain name containing a trademark and attempt to sell the domain name to a mark
owner causes no blurring of the trademark in the minds of the consumer, courts generally
had to stretch notions of "fame" in order to address cybersquatting under the FTDA.
While some of these domain name disputes did involve trademarks that were considered
household names, many other domain name “dilution” cases involved trademarks that
were not truly famous.

           A.    Pre-ACPA Cases – The Stretch to Determine Fame

        A leading domain name dispute in which the court found fame under the FTDA
prior to enactment of the ACPA is Panavision Int’l L.P. v. Toeppen.129 In that case, the
defendant registered the PANAVISION.COM domain name and set up a site with an
aerial photograph of Pana, Illinois. The defendant then approached Panavision, offering
to sell the domain name for $13,000. Rather than pay, Panavision sued, asserting a
trademark dilution claim, and won an injunction.130 In assessing fame, the district court
considered the eight non-exclusive factors set forth in the FTDA and found that: (1)
Panavision owned federal registrations for the PANAVISION marks; (2) Panavision had
extensively used and advertised its marks since 1954; (3) the distinctiveness and fame of
the PANAVISION marks were well established and undisputed and the marks had
developed strong secondary meaning because of Panavision's long period of exclusive
use and its status as a major supplier of photographic equipment; (4) Panavision’s
advertising was directed to the general public, individuals such as producers and
directors, and companies such as studios, television networks, and production companies;


127. See Thane Int’l v. Trek Bicycle Corp., 305 F.3d 894 (9th Cir. 2002).

128. Id.

129. See 141 F.3d 1316 (9th Cir. 1998).

130. Id.



                                                   23
and (5) Panavision's "Filmed With Panavision" credit appeared in the "end titles" of many
television shows and movies on a daily basis.131

        Although it affirmed the district court’s decision, the Ninth Circuit noted that the
use of federal anti-dilution law to address cybersquatting was creating a new form of
dilution outside of traditional tarnishment and blurring.132

        Another case decided prior to enactment of the ACPA was Hotmail Corp. v. Van
Money Pie Inc.133 That case involved a motion for preliminary injunction to enjoin the
defendants from diluting the plaintiff’s HOTMAIL mark by sending "spam" e-mails to
thousands of Internet e-mail users. The court granted the plaintiff’s motion and found the
HOTMAIL mark to be famous after applying the criteria set forth in the FTDA. The
court found that there was sufficient evidence to lead to a finding that plaintiff's
trademark was "famous" based on a number of facts, including that: (1) the plaintiff had
spent approximately $10 million marketing, promoting, and distributing its services in
association with the HOTMAIL mark; (2) the plaintiff’s mark had appeared in the
headers and footers of e-mail sent from and received by Hotmail subscribers, on
Hotmail's homepage and on nearly every page of its Website, on letterhead and
envelopes, on business cards, in promotional materials and in press releases; and (3) the
HOTMAIL mark appeared on millions of e-mails transmitted worldwide daily.134

        In Lozano Enterprises v. La Opinion Publ’g Co.,135 the plaintiff moved for
summary judgment against the defendant, who published a newspaper with the same title
as the plaintiff’s Spanish-language newspaper.136 The defendant also had registered a
domain name incorporating the name of the plaintiff’s paper. The court held that the
plaintiff was entitled to summary judgment on its dilution claim, and that the plaintiff’s
mark, LA OPINION, had become famous prior to the defendant's use. The court applied
the eight FTDA fame factors and found the plaintiff’s mark to be famous based on use for
more than 70 years, daily publication and paid circulation of more than 100,000 of the
newspaper featuring the mark, and the plaintiff’s federal registration for the mark.137




131. See Panavision Int’l, L.P. v. Toeppen, 945 F. Supp. 1296; 1996 U.S. Dist. LEXIS 19698; 40
U.S.P.Q.2d (BNA) 1908 (Dist. Cal. 1996).

132. See 141 F.3d at 1328.

133. See 1998 U.S. Dist. LEXIS 10729; 47 U.S.P.Q.2d (BNA) 1020 (April 16, 1998).

134. Id. at *2-3.

135. 1997 U.S. Dist. LEXIS 20372; 44 U.S.P.Q.2d (BNA) 1764; 26 Media L. Rep. 1020 (July 29, 1997).

136. Id. 1997 U.S. Dist. LEXIS 20372; 44 U.S.P.Q.2d (BNA) 1764; 26 Media L. Rep. 1020 (July 29,
1997).

137. Id. at *3-4.


                                                  24
         In Toys “R” Us v. Akkaoui,138 the plaintiff sought a preliminary injunction
enjoining the defendants from using in a domain name the mark ADULTS ‘R’ US or any
colorable variation of the plaintiff's TOYS ‘R’ US trademark.139 The court granted the
plaintiff’s motion and found the TOYS ‘R’ US mark to be famous. In applying the
FTDA fame factors, the court found that several factors weighed in favor of fame,
including that the plaintiff’s marks: (1) had been used since 1960 and 1983, respectively;
(2) were the subject of numerous trademark registrations and extensive enforcement
litigation; (3) had been used widely in advertising and promoting the plaintiff nationally,
through a variety of channels; and (4) were inherently peculiar and had acquired a strong
degree of distinctiveness.140
        A final example of a pre-ACPA domain name case in which the court found fame
is Intermatic Inc. v. Toeppen.141 In that case, the court granted the plaintiff's motion for
summary judgment on dilution grounds and concluded that INTERMATIC was a famous
mark within the meaning of the FTDA. The court based its decision on undisputed
evidence of the long history and use of Intermatic’s mark, and the fact that the Intermatic
mark was a strong, fanciful mark, which had been federally registered and exclusively
used by the plaintiff for more than 50 years.142
        Not all dilution claims raised in pre-ACPA domain name dispute cases were
granted. In Avery Dennison, the defendant, who had registered the domain names
www.avery.net and www.dennison.net, appealed a summary judgment decision entered
for Avery Dennison on its FTDA claims. Although the district court had concluded that
the plaintiff’s marks were famous, the Ninth Circuit disagreed and reversed and
remanded the case with instructions to enter summary judgment for the defendant.143
Applying the FTDA fame factors, the Ninth Circuit held that while the plaintiff’s
AVERY and DENNISON marks were likely distinctive, they were not famous. The
court refused to find fame despite evidence that the plaintiff had: (1) used its marks
continuously since the late 1800s and the 1930s, respectively; (2) obtained federal
trademark registrations for its marks; (3) spent more than $5 million a year advertising its

138. 1996 U.S. Dist. LEXIS 17090; 40 U.S.P.Q.2d (BNA) 1836 (Oct. 29, 1996).

139. Id.

140. Id. at *6.

141. See 947 F. Supp. 1227, 40 U.S.P.Q.2d 1412 (N.D. Ill. 1996).
142. Id. at 1228. See also Jews for Jesus v. Brodsky, 993 F. Supp. 282 (D. N.J. 1998) (holding that the
plaintiff’s mark was famous based on use of the name for more than twenty-four years without evidence of
any third-party use of similar marks, worldwide media publicity for the name, registration and use of the
mark since 1983, “considerable” advertising expenditures – averaging $497,679.70 per year – reaching a
variety of media, and extensive website promotion, such that the mark and name had come to identify
plaintiff alone); Playboy Enters., Inc. v. Universal Tel-A-Talk, Inc., 1998 WL 767440 (E.D. Pa. 1998)
(holding, without discussion of any factors, that the plaintiff’s marks were famous; findings of fact included
plaintiff’s use of marks since 1953, circulation of approximately 10 million monthly “readers,” federal
trademark registrations, sales of branded merchandise in fifty countries, considerable temporal and
monetary promotional expenditures, and public awareness of mark.).
143 See 189 F.3d 868 (9th Cir. 1999).



                                                      25
products (including those bearing the marks at issue); and (4) sold approximately $3
billion annually of its trademark-branded products (although there was no evidence
specifically indicating sales for products bearing the AVERY and DENNISON marks).144


           B.      Post-ACPA Cases

       As more and more domain name dispute cases were decided under the FTDA,
courts and commentators became increasingly critical of the strained fame analysis the
courts were applying. As Professor McCarthy noted:
           The prototypical cybersquatter does not use the reserved domain name as its mark
           before the public, so there is no traditional dilution by blurring or tarnishment.
           Thus, the courts have had to create a wholly new category of "dilution" in order to
           find a legal weapon to combat this new and different form of reprehensible
           commercial activity. But this legal tool only protects "famous" marks, requiring
           that the courts expand and devalue the category of "famous" marks in order to
           combat cybersquatting. What is needed is a legal tool that is specific to the
           conduct of the typical cybersquatter.145
        These concerns ultimately led to enactment of the ACPA, which was created
specifically to deal with cybersquatting.146 Without regard to the goods and services of
the parties, the ACPA permits a trademark owner to assert a claim by proving that the
defendant:
    1. has a bad faith intent to profit from the mark; and

    2. registers, traffics in, or uses a domain name that --
           (i) in the case of a mark that is distinctive at the time of registration of the domain
           name, is identical or confusingly similar to that mark; [or]
           (ii) in the case of a famous mark that is famous at the time of registration of the
           domain name, is identical to or confusingly similar with or dilutive of that
           mark.147
        Now, instead of applying a dilution analysis under the FTDA and stretching
notions of fame to address cases of cybersquatting, courts could apply the ACPA. Under
the ACPA, a court no longer needed to find a mark famous; it could conclude that a mark
was merely distinctive. Courts also no longer had to determine whether the registration
of a given domain name raised the likelihood of dilution, only that a domain name was

144. Id. at 873.

145. See J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS, § 25:77, Supp. 12/99.

146. See 15 U.S.C. § 1125(d)(1).

147. Id.



                                                 26
identical or "confusingly similar" to the plaintiff’s mark. Finally, courts no longer were
required to analyze the difficult requirement of use, since plaintiffs were required to
demonstrate only that a defendant had registered, trafficked in, or used the domain name
at issue with bad faith intent to profit.
        Enactment of the ACPA came just in time for the Second Circuit to apply the
statute in Sporty's Farm L.L.C. v. Sportsman's Mkt., Inc.148 The district court in that case
held that the SPORTY’S trademark (for household and aeronautical tools) was a famous
mark entitled to protection under the FTDA and granted an injunction ordering the
defendant to transfer the Sportys.com domain name to the plaintiff. While the case was
pending on appeal, the ACPA was passed and signed into law. The Second Circuit
determined that the ACPA applied to this case and, consequently, did not address fame or
the FTDA, instead affirming the injunction under the ACPA.149
         Considering the statutory text and decisions interpreting the ACPA, many pre-
ACPA decisions applying a dilution analysis now can be distinguished from more recent
FTDA decisions as cases that stretched the boundaries of fame to somehow address the
problem of cybersquatting. For cases involving such lesser known marks as LA
OPINION, INTERMATIC, and SPORTYS, the strained fame analysis seems to have
been result-driven, reflecting an effort by the courts to find a way to vindicate the rights
of trademark owners against cybersquatters. Pre-ACPA domain name decisions
involving better known marks, such as PANAVISION, HOTMAIL, and TOYS “R” US,
still could be relied upon as setting forth an accurate fame analysis for marks that truly
meet the fame requirements under the FTDA. It is less clear how a court would treat
those dilution cases involving the PLAYBOY and JEWS FOR JESUS marks post-ACPA,
although conceivably these cases could prove helpful, at least in an argument for niche
fame.150


VI.     FAME BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

        With enactment of the Trademark Amendment Act of 1999 (“TAA”), dilution
under the FTDA became a basis for opposition and cancellation proceedings before the
Trademark Trial and Appeal Board (the “TTAB” or the “Board”) of the U.S. Patent and
Trademark Office.151 Since the TAA’s enactment, the TTAB has issued a handful of
decisions addressing dilution as a basis for opposing the registration of a trademark or
service mark.152

148. 202 F.3d 48 (2d Cir. 2000).

149. Other courts that have addressed the issue of dilution in domain name disputes following enactment of
the ACPA have found specifically that mere registration and activation of a domain name containing a
trademark is not sufficient to support a dilution claim. See, e.g., Ford Motor Co. v. Great Domains.com,
Inc., 177 F. Supp.2d 635 (E.D. Mich. 2001).

150. See Playboy Enters., Inc. v. Netscape Communications Corp., No. 00-56648, (9th Cir. Jan. 14, 2004).

151. See 15 U.S.C. §§ 1063(a) and 1064.
152. Of those decisions, only a few have been deemed by the Board to be citable as precedent.


                                                    27
        The Board is in the unique position of having to decide whether a junior mark in
an intent-to-use application under Trademark Act Section 1(b)153 dilutes a senior mark for
purposes of registration. The Board clearly has stated that, under these circumstances
and contrary to the U.S. Supreme Court’s holding in Moseley,154 the applicable standard
in an opposition proceeding against an intent-to-use application is likelihood of dilution,
rather than actual dilution.155

       In order to prove dilution in a TTAB proceeding involving an intent-to-use
application, the owner of an allegedly famous mark must provide sufficient evidence that:

              (1)   the junior party’s use of its mark is in commerce,
              (2)   the junior party adopted its mark after the opposer’s mark became famous,
              (3)   the opposer’s mark is famous and distinctive, and
              (4)   the junior party’s mark diluted the famous mark.156

        It is important to note that the TTAB explicitly has stated that fame under a
dilution analysis is not the same as fame under a likelihood of confusion analysis.157
Rather, the TTAB has adopted the position that fame for dilution purposes must meet a
much more stringent test than the test for fame in a likelihood of confusion context.158
Furthermore, contrary to the Board’s policy in likelihood of confusion determinations,
the TTAB will not resolve doubts in favor of the owner of the allegedly famous mark in a
dilution fame analysis.159

         A.         Junior Party’s Use in Commerce

       The TTAB has held that an application based on intent-to-use the mark in
commerce satisfies the commerce requirement of the FTDA for opposition
proceedings.160 An application based on Trademark Act Section 44(d) also satisfies this
requirement under the FTDA.161

153. See 15 U.S.C. § 1051(b)(1).
154. See Moseley v. V Secret Catalogue Inc., 537 U.S. 418 (2003).
155. See, e.g., Toro Co. v. ToroHead, Inc., 61 U.S.P.Q.2d 1164 (T.T.A.B. 2001); NASDAQ Stock Market,
Inc. v. Antarctica, s.r.l., U.S.P.Q.2d 1718 (T.T.A.B. 2003) (finding the likelihood of dilution standard is
also applicable in an opposition to an application filed on the basis of Trademark Act Section 44 (d), 15
U.S.C. Section 1126(d)).
156. See Toro, 61 U.S.P.Q.2d at 1173 (citations omitted) (combining the list of factors adopted by the
First, Second and Seventh Circuits).
157. Id. at 1170 (citing I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 47, 49 U.S.P.Q.2d 1225, 1239
(1st Cir. 1998)).
158. Id. In re de Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973).
159. Id. at 1174.
160. See Toro, 61 U.S.P.Q.2d at 1174.
161. See NASDAQ, 69 U.S.P.Q.2d at 1734 (T.T.A.B. 2003).


                                                    28
         B.       Junior Party Adopted the Mark After Senior Mark Became Famous

        In opposition proceedings involving an intent-to-use application, a owner of an
allegedly famous mark must prove that its mark became famous prior to the filing date of
the trademark application or registration against which the senior user has filed an
opposition or cancellation action.162

         C.       Fame and Distinctiveness of the Senior Mark

        The TTAB has adopted a rigorous test to determine the fame and distinctiveness
of a mark under this element of the dilution test, which the Board has admitted “is
difficult to prove.”163 In determining whether a mark is distinctive and famous, the
TTAB has identified the following, non-exclusive factors to be considered:

              (1) the degree of inherent or acquired distinctiveness of the mark;
              (2) the duration and extent of use of the mark in connection with the goods or
                  services with which the mark is used;
              (3) the duration and extent of the trading area in which the mark is used;
              (4) the geographical extent of the trading area in which the mark is used;
              (5) the channels of trade of the good or services with which the mark is used;
              (6) the degree of recognition of the mark in the trading areas and channels of
                  trade used by the mark’s owner and the person against whom the
                  injunction is sought;
              (7) the nature and extent of use of the same or similar marks by third parties;
                  and
              (8) whether the mark was registered under the Act of March 3, 1881, or the
                  Act of February 20, 1905, or on the principal register.164

        Analysis of the degree of inherent or acquired distinctiveness of a mark is not the
same under the dilution analysis as the simple acquired distinctiveness analysis required
for registration on the principal register under Trademark Act Section 2(f).165 To meet
the fame test under the TTAB’s dilution analysis, “a mark must be not only famous, but
also so distinctive that the public would associate the term with the owner of a famous
mark,” even when encountering the term separate from the trademark owner’s goods and
services.166 The TTAB considers fame and distinctiveness “two overlapping, but slightly



162. See Toro, 61 U.S.P.Q.2d at 1174. In a footnote, the TTAB indicated that in a use-based application
under Trademark Act § 1(a), 15 U.S.C. § 1051(a), the owner of an allegedly famous mark must prove that
its mark became famous prior to the applicant’s use of the junior mark. Id.
163. Id. at 1176, 1180.
164. See 15 U.S.C. § 125(c)(1).
165. See Toro, 61 U.S.P.Q.2d at 1176.
166. Id. at 1177. See also NASDAQ, 69 U.S.P.Q.2d at 1735.



                                                   29
different, concepts.”167 The fame of a mark may be limited if evidence of distinctiveness
shows that there are numerous other uses of the term.168
        A defendant faced with a dilution claim may counter with arguments that the
allegedly famous mark lacks distinctiveness without having to file a counterclaim for
cancellation of the plaintiff’s pleaded registration.169 In addition, the TTAB has refused
to adopt a rule that acronyms per se cannot be inherently distinctive.170

        As for the remaining elements under the dilution fame analysis, mere evidence of
long term use of the mark in commerce, significant sales and advertising expenditures,
and nationwide use will not necessarily persuade the TTAB that a mark is famous. In its
Toro decision, the TTAB concluded that opposer’s TORO mark was not famous despite
evidence of use of the mark in commerce since 1914, nationwide use by approximately
2,500 TORO dealers throughout the country, annual sales of over $1 billion, and annual
advertising expenditures between $35 and $40 million, including evidence of advertising
in national, state and local printed media.171

        Even in the face of that evidence, the TTAB held that the owner of a famous mark
“must show a powerful consumer association between the term and the owner,”
evidencing that “its mark is truly famous.”172 In other words, the owner of a famous
mark claiming dilution in an opposition or cancellation proceeding must prove that the
famous mark, when encountered by the public in almost any context, is associated by the
public, at least initially, with the mark’s owner.173 Examples of evidence of a truly
famous mark accepted by the TTAB include:

         (1)        recognition of the famous mark by the other party;
         (2)        intense media attention; and
         (3)        surveys.174

      While Toro failed to prove that its mark was “truly famous,” the NASDAQ Stock
Market had no such problem in a subsequent dilution case before the TTAB. In



167. See Toro, 61 U.S.P.Q.2d at 1177.
168. Id. (citing In re Hasbro Inc. v. Clue Computing Inc., 66 F. Supp.2d 117 (D. Mass. 1999), aff’d, 232
F.3d 1, 56 U.S.P.Q.2d 1766 (1st Cir. 2000)).
169. See NASDAQ, 69 U.S.P.Q.2d at 1735-1736.
170. Id. at 1736 (dismissing applicant’s reliance on the Second Circuit’s decision in Nabisco Inc. v. PF
Brands Inc., 191 F.3d 208, 41 U.S.P.Q.2d 1882 (2d Cir. 1999)).
171. See Toro, 61 U.S.P.Q.2d 1164 (T.T.A.B. 2001).
172. Id. at 1180 (emphasis supplied) (citing I.P. Lund, 163 F.3d at 48, 49 U.S.P.Q.2d at 1127 (1st Cir.
1998).
173. Id. at 1171.
174. Id. at 1181 (citing Federal Express Corp. v. Federal Expesso, Inc., 201 F.3d at 177 (2d Cir. 2000)); Eli
Lilly & Co. v. Natural Answers Inc., 233 F.3d at 459, 469 (7th Cir. 2000); Grupo Gigante S.A. de C.V. v.
Dallo & Co., 119 F. Supp.2d 1083, 1099 (C.D. Cal. 2000) (survey considered, but not persuasive).



                                                     30
NASDAQ Stock Market Inc. v. Antartica S.r.l.,175 the opposer, NASDAQ Stock Market
(NASDAQ), submitted ample evidence to meet the TTAB’s stringent fame test. In
addition to evidence of its long time use of the mark in commerce, advertising
expenditures, licensing arrangements, promotional activities and expenditures, the TTAB
noted that NASDAQ had submitted evidence of the widespread recognition of its mark
outside of its specified field in all three forms recognized by the Board as adequate to
meet its “truly famous” test:

           (1)    evidence of the defendant’s acknowledgement of the fame of the
                  NASDAQ mark, (albeit, only to the extent of fame within the field of
                  financial investment);176
           (2)    various news articles published over the years discussing the NASDAQ
                  stock market or “‘NASDAQ-listed companies’”;177 and
           (3)    in particular, annual surveys showing the level of awareness of the
                  NASDAQ stock market among the investing and general public and
                  surveys showing how NASDAQ’s advertising “actually resulted in
                  recognition of NASDAQ by approximately three-quarters of investors”
                  prior to the filing date of the defendant’s application.178

Based on this evidence, the TTAB had “no difficulty in finding that NASDAQ was a
famous mark” and that the mark had become famous prior to the priority filing date of the
applicant’s application.179

        In Pep Boys, the Board found the opposer’s PEP BOYS mark famous for
purposes of the likelihood of confusion analysis and then assumed for the sake of the
dilution analysis that the mark was famous.180 The Board based its fame assumption on
the opposer’s evidence of the following: (1) the PEP BOYS mark was registered on the
Principal Register as an inherently distinctive mark; (2) the mark had been used in
commerce since the early 1920’s; (3) the opposer’s annual sales and promotional
expenditures had been extensive and generally had increased over the years;181 (4) the
opposer had advertised in all major media, and the resulting publicity for the mark,
including requests by third parties for licenses to use the mark in television and movie
projects, had generally increased over the years;182 (5) use of the mark was essentially


175. 69 U.S.P.Q.2d 1737.

176. Id.
177. Id. at 1729-1730.
178. Id. at 1729-1730, 1737.
179. See id. at 1737.
180. See The Pep Boys Manny, Moe & Jack of California v. Cherng Lian Ent. Co., Opp. No. 108,772,
Serial No. 75/138,188 (T.T.A.B. April 16, 2003) (not citable as precedent).
181. As of the time of the opposer’s testimony, the opposer was operating 629 stores in 36 states and Puerto
Rico. See id.
182. Total net sales increased from $389 million in 1985 to just over $2.48 billion in 2000. Id.



                                                     31
nationwide; and (6) the mark was “highly recognized in the trading areas and channels of
trade for the parties respective goods and services.”183

         The Pep Boys case is distinguishable from the Toro case in that the parties’
respective goods and services were essentially in the same industry: automotive parts and
retail automotive parts and accessories store services.184 However, despite the TTAB’s
assumption that the opposer’s PEP BOYS mark was famous prior to the filing date of the
opposed application,185 the Board held that there was no likelihood of confusion between
the parties’ marks, and that the applicant’s ROAD BOYS & Design mark did not dilute
the distinctive quality of the opposer’s PEP BOYS marks.186

        In subsequent decisions where the opposer claimed dilution as a basis for
opposing the registration of a mark, the Board has failed to reach the dilution issue. In
House of Blues Brands Corp.,187 the opposer filed an opposition to the registration of the
mark HOUSE OF SOUL in connection with entertainment services on the bases of
likelihood of confusion and dilution. The Board found that the HOUSE OF BLUES
mark was famous under the likelihood of confusion analysis and sustained the
opposition.188 Since the TTAB held that a likelihood of confusion existed between the
marks under Section 2(d) of the Lanham Act, it declined to consider whether the HOUSE
OF SOUL mark diluted the opposer’s mark.189

     The Board also declined to reach the merits of the opposer’s dilution claim in
McDonald’s Corp. v. 2Bell B.V.,190 after finding that the applicant’s MCDATE mark for


183. Compared to use in commerce since 1914 for the TORO mark. See Toro, 61 U.S.P.Q.2d at 1176.
184. See Pep Boys, supra note 180.

185. The Board indicated this was the date to be used for purposes of the dilution analysis, since there was
no evidence submitted to support the applicant’s alleged dates of first use of its mark. Id.
186. See Pep Boys, supra 180.
187. See House of Blues Brands Corp. v. Sylvia Woods, Inc., Opp. No. 117,309, App. Ser. No. 77/342,413
(T.T.A.B. June 24, 2003) (not citable as precedent).
188. Id. The Board considered the following evidence submitted by House of Blues in reaching its
conclusion that the opposer’s mark was famous under a likelihood of confusion analysis: (1) extensive and
nationwide use and promotion of the mark in connection with the HOUSE OF BLUES restaurants/live
music venues; (2) production and distribution of live and pre-recorded music; (3) provision of charitable
and educational services; (4) sponsorship of televised sporting events, celebrity events, and music and folk
art festivals; (5) significant expenditures in advertising and promoting HOUSE OF BLUES goods and
services; (6) significant gross revenues of almost $800 million from 1997 through May 2001; (7) four
million visitors to opposer’s establishments in 2000; (8) 6.5 million tickets sold to opposer’s music
concerts; and (9) opposer’s 1999 customer survey showing respondents in Chicago and New Orleans
identified opposer’s HOUSE OF BLUES establishments as their favorite place to go to hear live musical
performances. Id.
189. Id. See also Diamonique Corp. v. Wieck Family, Ltd., Opp. No. 91123296, App. Ser. No. 76052817
(T.T.A.B. April 21, 2004).
190. Opp. No. 91118911, App. Ser. No. 75/685,456 (T.T.A.B. April 22, 2004) (not citable as precedent).
See also Sharp Corp. v. ThinkSharp, Inc., Opp. No. 91118745, App. Ser. No. 75652878 (T.T.A.B. March


                                                     32
dating services was confusingly similar to the opposer’s family of “MC” marks covering
various goods and services, including, but not limited to, restaurant services and food
products.191 The Board found that the evidence established that McDonald’s owned a
family of marks consisting of the “MC” prefix and a generic term, and that the “MC”
feature in the family of marks was distinctive.192 Although the TTAB did not reach the
merits of the opposer’s dilution claim, in determining that opposer’s “MC” family of
marks was famous under the likelihood of confusion analysis, the Board indicated that
the evidence showed that the “MC” family of marks was “strong and famous and entitled
to a broad scope of protection.”193

VII. FAME UNDER STATE DILUTION LAWS
[NOTE: This section does not include discussion of Illinois, Indiana, Iowa, Kansas,
Kentucky, Louisiana, Maine, Texas, Virginia, West Virginia, Wisconsin, and
Wyoming. For discussion of these states, please see the INTA State Dilution
Subcommittee’s review of state dilution law.]

        Thirteen states have not yet adopted a trademark dilution statute.194 As expected,
these states do not have any case law addressing the issue of trademark dilution. The
remaining states that have adopted a trademark dilution statute in one form or another can
be generally classified as follows:
• those states that have adopted a trademark dilution statute similar to the FTDA,
requiring actual dilution;195

• those states that have adopted a trademark dilution statute requiring merely the
likelihood of dilution of a distinctive mark;196 and

• those states that have adopted a trademark dilution statute requiring actual dilution,
but which courts have appeared to interpret as requiring only a likelihood of
dilution.197

31, 2004) (not citable as precedent) (finding that opposer waived the issue of dilution, despite mentioning
dilution in its brief, by failing to argue or otherwise raise dilution before the Board).
191. Id. The opposer entered evidence of its ownership of thirty-five (35) registered marks for its “MC”
formative marks. Id.
192. Id.
193. In particular, the Board noted evidence showing that, in the year 2000 alone, McDonald’s spent more
than $500 million in advertising and had sales exceeding $19.5 billion in the United States and $40 billion
worldwide. Id.
194. Colorado, Indiana, Kentucky, Maryland, Michigan, North Carolina, North Dakota, Ohio, Oklahoma,
South Dakota, Vermont, Virginia, and Wisconsin.
195. Arizona, Arkansas, Connecticut, Hawaii, Idaho, Illinois, Iowa, Kansas, Minnesota, Mississippi,
Nebraska, New Jersey, Pennsylvania, South Carolina, Tennessee, Utah, Washington, West Virginia, and
Wyoming.
196. Alabama, Alaska, California, Delaware, Florida, Georgia, Louisiana, Maine, Massachusetts, Missouri,
Montana, New Hampshire, New York, Oregon, Rhode Island, and Texas.
197. Nevada and New Mexico.



                                                     33
        Generally, the state dilution statutes similar to the FTDA set forth most, if not all,
of the same fame factors listed in the FTDA, namely:

         1.       the degree of inherent or acquired distinctiveness of the mark in the state;
         2.       the duration and extent of use of the mark in connection with the goods
                  and services with which the mark is used;
         3.       the duration and extent of advertising and publicity of the mark in the
                  state;
         4.       the geographic extent of the trading area in which the mark is used;
         5.       the channels of trade for the goods or services with which the mark is
                  used;
         6.       the degree of recognition of the mark in the trading areas and channels of
                  trade in the state used by the mark’s owner and the person against whom
                  relief is sought;
         7.       the nature and extent of use of the same or similar mark by third parties;
                  and
         8.       whether the mark is the subject of a registration in the state or a federal
                  registration under the Act of March 3, 1881, or under the Act of February
                  20, 1905, or on the principal register.198

        There is case law discussing the dilution analysis under state statutes in
approximately half of those states with dilution statutes similar to the FTDA.199 The
same can be said with respect to those states requiring merely the likelihood of dilution of
a distinctive mark.200 However, the majority of these decisions were issued prior to the
U.S. Supreme Court’s decision in Moseley and their precedential value should be
weighed in that context. A further, in-depth discussion of state trademark dilution laws
can be found in the White Paper of INTA’s State Dilution Subcommittee.201

VIII. CONCLUSION

        In the wake of the Supreme Court’s decision in Moseley, trademark owners,
commentators, courts and Congress, are reassessing federal dilution law. Although
Moseley did not address the issue of fame and, therefore, did not change the law in that
area, the overall reexamination of dilution law has included examination of how to define
fame. It is likely that, through revisions to the FTDA or as a result of judicial decisions,

198. See 15 U.S.C. § 1125(c). See also Arizona R.S. § 44-1448.01; Arkansas C.A. § 4-71-213; Connecticut
Chapter 621a, Sec. 35-11i; Hawaii H.R.S. § 4821-1 – 482-32; Idaho Title 48, Ch. 5, § 48-513; Illinois - §
765 ILCS 1036/65; Iowa Title XIII, Subtitle 5, § 548.113; Kansas Chapter 81, Art. 2, § 81-214; Minnesota
Stat. §333.285; Mississippi Code §72-25-25; Missouri Rev. Stat. §417.061; Nebraska R.R.S. Neb. § 87-
140; Nevada Ref. Stat. § 600.435; N.J. Stat. § 56:3-13.20; N.M. Stat. § 57-3B-15; 54 Pa. C.S. § 1124; S.C.
Code § 39-15-1165; Tenn. Code § 47-25-513; Utah Code § 70-3a; Wash. Rev. Code § 19.77.160; W. Va.
Code §47-2-13; Wyo. Stat. §40-1-115.

199. Connecticut, New Jersey, Pennsylvania, Tennessee, and Washington.
200. California, Florida, Georgia, Massachusetts, New Hampshire, New York, Oregon, and Rhode Island.
201 See http://www.inta.org/dilution/.


                                                    34
the law regarding fame will change in the near future and the foregoing discussion
rendered, at least in part, obsolete. What will be the fate of the niche market theory of
fame? Will the eight-factor fame test under the FTDA remain unchanged? Will the
statute be revised to include a more specific definition of fame? Only time will tell.




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