Trademark Dilution
Intro to IP - Prof Merges
3.30.09
Trademark Dilution
• Nabisco v. PF Brands
• Vuitton v. Haute Diggity Dog, Inc.
• Overview of the statute
CatDog
Word Mark GOLDFISH Goods and Services IC 001 005 029 030
031 032. US 046. G & S: Confections and Bakery ProductsNamely, Cookies, Salted Biscuits, [Pastries and Cakes] Mark
Drawing Code (1) TYPED DRAWING Serial Number 72133881
Filing Date December 12, 1961 Current Filing Basis 44E
Original Filing Basis 44E Registration Number 0739118
International Registration Number 0972118 Registration
Date October 9, 1962 Owner (REGISTRANT) Kambly AG,
Biscuits-, Confiserie- und Nahrmittelfabrik CORPORATION
SWITZERLAND  (LAST LISTED OWNER) PEPPERIDGE FARM,
INCORPORATED
Assignment Recorded ASSIGNMENT RECORDED Attorney of
Record A. MINNIE ALEXANDER Type of Mark TRADEMARK
Register PRINCIPAL -- Renewal 2ND RENEWAL 20030123
Live/Dead Indicator LIVE -http://tess2.uspto.gov/bin/showfield?f=doc&state=4010:qi
qp26.2.28
Nabisco
• Injunction granted by trial court
– Also: recall notice
• NB: State antidilution protection also
5 elements of TM Dilution
1. Famous mark
2. Distinctive
3. Jr. user: commercial use, in commerce
4. After Sr. mark has become famous
5. Causes dilution of distinctive quality of Sr
mark
Distinctiveness
• “Spectrum” of marks (generic 
arbitrary/fanciful)
• Separate from “Fame”
Famous marks that are not
distinctive
• National, Ace, United, etc.
• Be careful with this –
– [a] Graphic elements can still be distinctive
– McCarthy sees redundancy with fame . . .
Arguments for distinctiveness
• This is the quality the statute is seeking to
protect
– “Kodak bicycles” dilutes the uniqueness of the
TM “Kodak”
– Shift of emphasis from product (and consumer
associations) to mark itself -- p. 744
Nabisco’s arguments
• 3 cracker mix
• Different packaging
• “Post-sale confusion” – Levi’s jeans case
Product proximity
• Court says sale of a competing product can
dilute distinctiveness of a TM
• Does this undermine the idea of a distinct
harm from TM dilution?
43(c) Dilution by blurring; dilution by
tarnishment
(1) Injunctive relief
Subject to the principles of equity, the owner of a
famous mark that is distinctive, inherently or
through acquired distinctiveness, shall be entitled
to an injunction against another person who, at
any time after the owner's mark has become
famous, commences use of a mark or trade name
in commerce that is likely to cause dilution by
blurring or dilution by tarnishment of the famous
mark, regardless of the presence or absence of
actual or likely confusion, of competition, or of
actual economic injury.
(2) Definitions
(A) For purposes of paragraph (1), a mark
is famous if it is widely recognized by
the general consuming public of the
United States as a designation of source
of the goods or services of the mark's
owner. In determining whether a mark
possesses the requisite degree of
recognition, the court may consider all
relevant factors, including the following:
(i) The duration, extent, and geographic reach
of advertising and publicity of the mark,
whether advertised or publicized by the
owner or third parties.
(ii) The amount, volume, and geographic
extent of sales of goods or services offered
under the mark.
(iii) The extent of actual recognition of the
mark.
(iv) Whether the mark was registered . . .
43(c)(2)(B)
(B) For purposes of paragraph (1), "dilution by
blurring" is association arising from the
similarity between a mark or trade name and
a famous mark that impairs the
distinctiveness of the famous mark. In
determining whether a mark or trade name is
likely to cause dilution by blurring, the court
may consider all relevant factors, including
the following:
(i) The degree of similarity between the mark or
trade name and the famous mark.
(ii) The degree of inherent or acquired
distinctiveness of the famous mark.
(iii) The extent to which the owner of the famous
mark is engaging in substantially exclusive use of
the mark.
(iv) The degree of recognition of the famous mark.
(v) Whether the user of the mark or trade name
intended to create an association with the famous
mark.
(vi) Any actual association between the mark or
trade name and the famous mark.
Tarnishment
(C) For purposes of paragraph (1),
"dilution by tarnishment" is
association arising from the
similarity between a mark or trade
name and a famous mark that
harms the reputation of the famous
mark.
43(c): Limiting Factors
• Injunction only
• Registration of defendant’s mark a complete
defense
• Fair use, noncommercial use, news reporting
(4) Burden of proof
In a civil action for trade dress dilution under this
chapter for trade dress not registered on the
principal register, the person who asserts trade
dress protection has the burden of proving that(A) the claimed trade dress, taken as a whole, is
not functional and is famous; and
(B) if the claimed trade dress includes any mark or
marks registered on the principal register, the
unregistered matter, taken as a whole, is famous
separate and apart from any fame of such
registered marks.
• HAUTE DIGGITY DOG is the brain puppy of Pamela
Reeder and together with partner Victoria
Dauernheim, Haute Diggity Dog has quickly grown
from a fun idea to a successful line of popular parody
dog toys, unique collars, carry bags, and must have
dog accessories.
• PAMELA REEDER is no stranger to growing a business.
She learned the ropes while owning a successful bath
and body retail store. She also owned and operated a
freelance floral design business. Pamela lives with her
two beloved dogs Biscuit and Rusty.
• VICTORIA DAUERNHEIM was one of the pioneers at
FedEx and assisted the start-up company through its
development years into becoming a billion dollar giant
we know today. Victoria has a feisty Pomeranium
named Fluffy.
Parody – p. 10
“The name “Chewy Vuiton” is, like “Timmy
Holedigger,” an obvious parody of a famous
brand name. The fact that the real Vuitton
name, marks, and dress are strong and
recognizable makes it unlikely that a parodyparticularly one involving a pet chew toy and
bed-will be confused with the real product.”
TM Infirngement
• Good review of infringement factors
• Marketing channels, price
– Internet marketing -- ?
Dilution/Parody – p. 17
“[T]he Second Circuit and its district
courts have held on numerous
occasions that in the case of parody,
“the use of famous marks in parodies
causes no loss of distinctiveness, since
the success of the use depends upon
the continued association with the
plaintiff.”
“This Court finds that no reasonable
trier of fact could conclude that
Plaintiff's mark is diluted by blurring
in this case, and summary judgment
is appropriate. Accordingly,
Defendants' motion for summary
judgment will be granted for
dilution by blurring.”
Tarnishment
“Tarnishment occurs when the plaintiff's
trademark is likened to products of low
quality, or is portrayed in a negative
context. Deere & Co. v. MTD Prods., 41
F.3d 39, 43 (2d Cir.1994). When the
association is made through harmless or
clean puns and parodies, however,
tarnishment is unlikely.”