INTA’s U.S. Dilution Case Law Database Provides Insights on Proving the Fame of Marks
Carrie Hefte, Wells Fargo & Co., Minneapolis, Minnesota
Anna Kim, NBCUniversal Media, LLC, Universal City, California
Lisa Iverson, Friedman Law Group, Chicago, Illinois
Mitchell Stabbe, Wilkinson Barker Knauer, LLP, Washington, D.C.
The U.S. Subcommittee of INTA’s Famous and Well-Known Marks Committee (FWKMC) has updated its U.S. Dilution Case Law Database (database), and has analyzed Trademark Trial and Appeal Board (TTAB) cases that address the fame of a mark as an influencing factor in finding dilution. A number of those cases also addressed the topic of whether a mark is famous for purposes of likelihood of confusion (LOC). The updated database reveals that the level of proof needed to prove the fame of a mark for purposes of LOC is lower than the proof required to show fame for purposes of dilution in front of the TTAB.
The updated database includes approximately 80 TTAB decisions from 2010 through 2016 that substantively address the fame of a mark. Of these, only 29 percent of those TTAB cases found the opposer’s mark to be famous, with the remaining cases determining either that the mark was not famous for purposes of dilution or that there were factual issues which precluded a decision on the record before the TTAB. In addition, only 11 percent of the TTAB cases in the database found dilution of the famous mark. Thus, in more than a third of the cases in which the TTAB found a mark to be famous, it also found dilution.
Based on the analysis of the decisions in the database, practitioners should keep in mind that proving the fame of a mark for the purposes of LOC and dilution before the TTAB requires substantial and meaningful evidence, including a showing of fame prior to the filing date of the opposed mark, for a dilution argument to prevail. Thus, if a defendant did not adopt its mark recently, the plaintiff should be aware that it will need to make a greater effort to develop long-term evidence of fame before filing.
One notable TTAB case in the database highlights the types and level of evidence that may influence the TTAB to find a design mark to be famous. In Target Brands Inc. v. Artificer Life Corp., Opposition Nos. 91206421 and 91206422 (May 6, 2014) [non-precedential], the fame of Target’s “bullseye” design mark was a factor in the TTAB’s decision to sustain the opposition on the ground of LOC and its refusal of Artificer’s applications to register a bullseye design next to the word “Artificer” for use with clothing and jewelry. The TTAB held that Target’s bullseye design was famous based on evidence that it: (1) has been used continuously since the 1960s; (2) is recognized by 96 percent of Americans; and (3) is used at 1,700 retail stores and online. Other evidence included a third-party ranking the bullseye design as the fourth most valuable retail brand in the United States, with a brand value over $17 billion and evidence that Target spends $1 billion a year on advertising. Target also submitted evidence that it had achieved between $62.9 billion to $72.0 billion in annual sales in each year between 2008 and 2012. Thus, it seems that evidence of long-standing use, widespread recognition, and prominent and prevalent use will support a finding of dilution.
Another TTAB case featured in the database is Inter IKEA Systems B.V. v. Akea, LLC, 110 USPQ2d 1734 (TTAB 2014). Fame was a factor in both the infringement and dilution arguments in IKEA’s opposition against Akea’s application to register its AKEA mark in Classes 5, 35, and 44. Akea sells nutritional supplements. The TTAB reviewed the factors governing whether the mark was famous for purposes of the LOC claim and held the IKEA mark to be famous for retail store services in the field of furniture, housewares, and home furnishings and strong for its other goods and services. Nevertheless, the goods and services provided under the AKEA mark in Classes 5 and 44 were not deemed sufficiently similar to support a finding of LOC. However, the TTAB refused registration of the AKEA mark in Class 35 for providing advice and information in the field of career and business opportunities because of the fame of the IKEA mark. The TTAB assumed, without deciding, that IKEA’s evidence of fame for purposes of LOC was sufficient to establish fame for purposes of dilution. Nonetheless, the TTAB held that IKEA’s evidence of fame failed to show the IKEA mark was famous prior to Akea’s filing date, so IKEA’s dilution argument failed.
When practicing before the TTAB, proving the fame of a mark for the purposes of LOC and dilution requires substantial and meaningful evidence, including a showing of fame prior to the filing date of the opposed mark for a dilution argument to prevail. Thus, plaintiffs will likely need to develop long-term evidence of fame before filing an opposition in the event the defendant is not new to the market. The FWKMC encourages INTA members to engage with the database to gain further insight into TTAB cases.