In a recent precedential decision, the TTAB sustained an opposition filed by Tivo Brands LLC and refused registration of the marks TIVOTAPE and TIVOBAR on the ground that they are likely to dilute the distinctiveness of the famous TIVO mark by blurring. This rare dilution decision provides useful guidance on when an opposer must establish the fame of its mark and how to determine whether “blurring” is likely to occur.
Applicant Tivoli LLC entered the lighting business in 1972. The TIVOLI brand name was inspired by the spectacular lighting displays at the famous Tivoli Gardens in Copenhagen, Denmark. Over the next few decades Tivoli registered various TIVO-formative marks for lighting fixtures, including TIVOLI, TIVOLED, TIVOFLEX, and TIVOLITE. In 1999, Opposer Tivo Brands pioneered the development of the digital video recorder (or DVR) under the TIVO trademark. The product was an enormous hit among consumers and TIVO became recognized as a household brand name for DVR players by 2010. Later in 2010, Tivoli introduced a tape lighting product called TIVOTAPE and filed an application to register this mark in 2014. In 2015, Tivoli introduced a lighting product in the shape of a bar called TIVOBAR and filed an application to register this mark in 2016. Tivo Brands opposed these last two applications under Section 43(c) of the Lanham Act alleging dilution by blurring.
To prevail on the dilution claim, Tivo Brands needed to establish the following elements:
- Tivo Brands’ TIVO mark is famous and distinctive;
- Tivoli is using the involved TIVOTAPE and TIVOBAR marks;
- Tivoli’s use of those marks commenced after the TIVO mark become famous; and
- Tivoli’s use of the TIVOTAPE and TIVOBAR is likely to blur the distinctiveness of the TIVO mark.
Element 2 of the test was not in dispute. With respect to elements 1 and 3, the TTAB found that the TIVO brand was inherently distinctive and had become famous prior to 2010. Evidence of fame included a mountain of press references and video clips discussing the product dating back to 2000. As a result, by 2010, TIVO had become an iconic brand in the DVR field and had revolutionized television viewing for consumers. Tivoli argued that this evidence was insufficient to show dilution because Tivo Brands needed to establish the fame of its TIVO marks prior to 1972, the date on which Tivoli adopted its original TIVOLI mark. The TTAB disagreed, holding that the key date for establishing fame was when the defendant first began using the “involved marks.” Here the “involved marks” were TIVOTAPE and TIVOBAR, not the earlier TIVOLI mark. The “involved mark” cannot change over time. To base the fame analysis on earlier use of marks other than TIVOTAPE and TIVOBAR, Tivoli would need to establish that the use of the earlier marks could be “tacked” on to TIVOTAPE and TIVOBAR marks. Tacking requires that the earlier marks be “legally equivalent” to the current “involved marks.” Since TIVOLI is obviously not “legally equivalent” to TIVOTAPE and TIVOBAR, the operative date must be 2010 and not 1972.
Tivoli also argued that Tivo Brands needed to establish that the TIVO mark was still famous at the time of trial. Indeed, Tivoli argued that consumer recognition of the TIVO mark had weakened in recent years and that there was insufficient evidence to establish that TIVO remained famous now. The TTAB agreed that for a dilution claim to succeed, the plaintiff needed to show that the mark retains fame at the time of trial. Otherwise, a plaintiff whose mark has lost its fame could continue to enjoy the extraordinary protection of the dilution statute, even though its mark may no longer be entitled to such protection. In this case, while most of the evidence established fame in years before 2010, the record contained more than enough evidence in subsequent years to establish that TIVO remained famous at the time of trial. This evidence showed revenues of over $800 million in 2017 and 6.8 million TIVO subscribers as recently as 2016.
With respect to element 4, Tivo Brands was required to establish that the TIVOTAPE and TIVOBAR marks create an association with the TIVO mark that is likely to impair its distinctiveness. In determining whether consumers would make such an association, the TTAB held that the marks need not be identical, but that it was instead proper to compare the marks as a whole. Further, it was also permissible in this analysis to consider that one feature of a mark may make a greater impression than other features. Since the -TAPE and -BAR suffixes of Tivoli’s marks were descriptive, the initial TIVO- portion dominated both parties marks. As such, the TIVOTAPE and TIVOBAR marks would trigger consumers to conjure up the famous TIVO mark in their minds. This association between Tivoli’s marks and the Tivo Brand mark was deemed likely to impair the distinctiveness of the famous TIVO mark, thereby requiring that registration of TIVOTAPE and TIVOBAR be denied on dilution grounds.