This is really something! I always knew John Welch was the definitive resource online, and then some, for what’s going on at the Trademark Trials and Appeal Board — the TTAB, of course — via his seminal, inimitable and comprehensive TTABlog®. But I didn’t know that his blog was now an official resource for ex cathedra pronouncements from Himself!
Check. This. Out. July 11, 2016 on the TTABlog:
Professor McCarthy Criticizes the TTAB’s Dilution Analysis
I wish the T.T.A.B. would stop saying that dilution of a mark can be shown merely by proving that the challenged mark causes people to think of the famous mark. In its March 31, 2016 decision in theOmega case (118 U.S.P.Q. 2d 1289, 1298) it quoted from its last year’s decision in the New York Yankees case (114 U.S.P.Q. 2d 1497, 1506). It said that dilution by blurring occurs when “a substantial percentage of consumers, on seeing the junior party’s use of a mark on its goods, are immediately reminded of the famous mark and associate the junior party’s use with the owner of the famous mark, even if they do not believe that the goods come from the famous mark’s owner.” That’s just a part of what dilution demands and is not what the statute says. . . .
The Supreme Court made it clear that as a matter of basic dilution theory, proof of association is itself neither proof of blurring nor proof that blurring is likely: “‘[b]lurring’ is not a necessary consequence of mental association. (Nor, for that matter, is ‘tarnishing.’)” Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 434 (2003).
This is the best thing in the world, and the way it ought to be, because you won’t believe what happened next!