The Trademark Trial and Appeal Board (TTAB) recently shed light on when fame must be shown in cases of dilution by blurring. Handing down two clarifications, the TTAB decided that fame must be shown:
- as of first use of an applicant's trademark, not only as of the date of its registration application; and
- as of the date of first use of any kind by an applicant, not only as of the date of first use for those goods and services listed in its application.
The Alpha Phi Omega fraternity (APO) sought to register two trademarks under Section 2(f):
- a crest mark for jewellery; and
- the mark ΑΦΩ for "headwear; jackets; shirts; sweatshirts".(1)
The crest mark is as follows:
Click here to view image.
Omega SA opposed both of these applications, alleging that the applications would cause likelihood of confusion and likelihood of dilution by blurring with its own marks. Omega owned registrations containing the term 'Omega' – in both stylised form and Greek alphabet form – used in connection with goods and services such as watches, clothing, scarves, neckties and "apparatus for use in determining the results of sporting events". Some of Omega's registered marks include:
Click here to view image.
The proceedings were consolidated before the TTAB. APO moved for summary judgment on both of Omega's asserted grounds. The TTAB granted APO's motion for summary judgment as to its crest mark for likelihood of confusion and likelihood of dilution by blurring; however, APO's motion was denied as to its ΑΦΩ mark on both grounds.
Considering the relevant factors from In re EI du Pont de Nemours & Co,(2) the TTAB found no genuine dispute of material fact as to the dissimilarity of APO's crest mark and Omega's marks. The marks were so "dissimilar in appearance, connotation, and commercial impression" that it was unlikely that they would cause confusion. The word 'Omega', which was prevalent in many of Omega's marks, played a very minor role in APO's crest mark and would not be considered separately from the remainder of the mark by viewers. Moreover, any similarities between the marks ended with the word 'Omega'. However, the TTAB denied summary judgment on likelihood of confusion between APO's ΑΦΩ mark and Omega's marks, finding a genuine dispute of material fact.
Turning to the issue of dilution by blurring, the TTAB directed its attention to Omega's argument regarding when fame should be established. Omega argued that it need establish the fame of its marks only prior to APO's filing of its involved applications, not from APO's first use of its marks. Omega made this argument notwithstanding the fact that APO's applications were use-based applications, not intent-to-use applications, and alleged use in commerce prior to APO's filing date.
In support of its argument, Omega cited a Federal Circuit holding stating that "in the case of an intent-to-use application, an owner of an allegedly famous mark must establish that its mark had become famous prior to the filing date of the trademark application".(3) Omega argued that this holding "reflected a conscious decision by the Federal Circuit to broaden application of the Toro rationale to use-based applications", despite obvious differences between the two cases.
The TTAB disagreed, finding that Omega had misread the precedent. In the board's opinion, Omega's interpretation of the Federal Circuit's decision would nullify the Trademark Dilution Revision Act requirement that fame be shown before commercial use of the defendant's mark. The TTAB therefore held that an opposer must show that its marks became famous prior to the applicant's first use in commerce of the marks asserted in the involved use-based applications. However, if an applicant fails to establish when this first use in commerce occurred, an opposer need only show fame prior to the constructive use date of the applicant's marks (ie, the filing date).
The TTAB addressed a second question under dilution by blurring: whether a plaintiff must establish that its mark became famous prior to the defendant's use of its mark in commerce as to any goods or services, or only prior to the mark's use in commerce as to the goods and services specifically identified in the defendant's opposed application. The TTAB found that a plaintiff must establish fame of its mark prior to "any established, continuous use" of the defendant's mark.
The relevant provision in the Lanham Act contains no language limiting use of a mark to specific goods or services, while other sections of the Lanham Act do limit the term 'mark' in this manner; according to the TTAB, if Congress had intended to limit use of a mark, it would have done so. Furthermore, the TTAB reasoned that the purpose of a claim of dilution by blurring is to determine "whether any use by defendant of its involved mark has reduced the ability of the plaintiff's mark to serve as a unique identifier of the plaintiff's products and services", not just in relation to the identified goods or services. Case law supports this claim.
Utilising these now-clarified standards, the TTAB turned to APO's motion for summary judgment on Omega's claim of dilution by blurring. In regards to APO's crest mark, the TTAB found that the mark was unlikely to dilute Omega's marks by blurring, as no genuine dispute of material fact existed as to the relevant Lanham Act factors under Section 43(c)(2)(b).
The marks were "strikingly dissimilar", as shown in the likelihood of confusion analysis. There was no evidence that APO intended to create an association with Omega's marks – demonstrated by ample evidence from APO with no evidence to the contrary offered by Omega – and the record had no evidence of actual association between the crest mark and Omega's marks. However, the TTAB did find a genuine dispute of material fact as to whether APO's ΑΦΩ mark was sufficiently similar to Omega's marks, and as to when APO first used ΑΦΩ in interstate commerce, either as a trademark for goods or as a trade name for its fraternal organisation.
The TTAB's findings arguably make it more difficult for an opposer to assert a claim of dilution by blurring when an applicant has previously used its mark in commerce. By requiring an opposer to show that its mark was famous as of the date of first use of any kind of an applicant's mark, the TTAB is requiring that an opposer prove that its mark was serving as a unique identifier of its goods at the time that the applicant began using the mark.
It is of note in this case that APO was founded in 1925, while Omega claims that it first used one of its marks in 1894. This could be interesting going forward with the claims against APO's ΑΦΩ mark.
For further information on this topic please contact Timothy J Kelly by telephone (+1 212 218 2100) or email ([email protected]). The Fitzpatrick, Cella, Harper & Scinto website can be accessed at www.fitzpatrickcella.com.
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