McCarthy speaks

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

Professor J. Thomas McCarthy has been a consistent critic of the TTAB’s analysis in dilution cases, particularly the Board’s failure to properly consider the issue of “impairment” or “damage” arising from the alleged dilution. He sent me the following comment for posting:

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!

What happened next was that commenters commented!  A learned discussion ensued!

And then it gets even better because The McCa’t came back!!  Yes, only four days later, on July 15th:

Further Comments of Professor McCarthy Regarding TTAB Dilution Analysis

Professor McCarthy responds below to the comments on this TTABlog post regarding his criticism of the TTAB’s dilution analysis.

I don’t agree with the commenters who argue that the T.T.A.B. is correct in thinking that “association” automatically proves that it is likely (probable) that the famous mark will be harmed and lose strength. I disagree with the argument that the existence of ANY other similar mark on ANY goods or services creates actionable “dilution” – once there was one, now there are two. First, the plaintiff would have to prove its mark is unique – the one and only trademark use of this designation – on any goods or services. Second, this would create a true “right in gross,” which everyone has always said is what dilution law does not do. (That’s a monopoly on the word as a mark.) The statute says that plaintiff must prove that the “association” created by the accused mark “impairs the distinctiveness of the famous mark.” The Supreme Court said in Victoria’s Secret that association does not prove impairment.

Plaintiff must articulate some scenario in which there a likelihood that the strength of the plaintiff’s mark will be lessened. . . .

Host to the Most
Host to the Most

And then there were more comments!  You can see them, along with Prof. McCarthy’s full bull, at the link.

This is the bestest thing ever.  This is how it ought to be.  Do I have to explain why, or is it obvious?  It’s obvious, of course.

And by the way, on the substance:  The Man is dead on, and if anything ever posted on LIKELIHOOD OF CONFUSION® could ever have been read to suggest that Prof. McCarthy’s only take on the scope of a trademark owner’s rights is “more, more, more,” than mea maxima culpa, because read this excerpt from the July 15th post (emphasis mine).

In the 2016 T.T.A.B. Omega case, OMEGA watch alleged that collegiate fraternity Alpha Phi Omega’s use of its name in Greek letters (???) on shirts would dilute the OMEGA mark in English or as the Greek letter ?. The Trademark Board denied applicant’s motion for summary dismissal of the opposition to its application for the three Greek letters. In my opinion, the Board should have found that there is no plausible situation under which the Greek lettered name of the fraternity on T-shirts would be likely to impair the distinctiveness of the OMEGA or ? marks for watches. If so trivial a registered use can be held likely to damage the OMEGA mark for watches, then the watch company truly would have a monopoly on all commercial use of a letter from the Greek alphabet. To me, that would expand trademark law beyond all reasonable bounds. I think there could be “blurring” only if when people see the OMEGA watch mark, they will think of the Alpha Phi Omega name and that will impair the strength of the OMEGA mark. Omega v Alpha Phi Omega, 118 U.S.P.Q. 2d 1289, 1300 (T.T.A.B. 2016)

In fact, this is the same common-sense reasoning — limiting the already novel power of trademark dilution to a situation where it could actually dilute — which, when applied by the Seventh Circuit in Hugunin v. Land O’Lakes, Inc., 815 F. 3d 1064 (7th Cir. 2016), I applauded loudly in this post.  Money quote by the court (my bold, again):

Land_O'Lakes_logoIt’s difficult to fit the present case into either species of dilution. Everyone recognizes “Tiffany” as the name of a luxury jewelry store on Fifth Avenue in New York (with stores in other major cities), and seeing the name on a hotdog stand a passerby might think of the jewelry store and of the incongruity of a hot-dog stand’s having the same name; he might think the jewelry store’s cachet impaired by the coincidence and switch his patronage to Cartier or Harry Winston. Many consumers would recognize the name “LAND O LAKES” as referring to the dairy company, but we can’t see how the company could be hurt by the use of the same name by a seller just of fishing tackle. The products of the two companies are too different, and the sale of fishing tackle is not so humble a business as the sale of hot dogs by street vendors. And so it is beyond unlikely that someone dissatisfied with LAND O LAKES fishing tackle would take revenge on the dairy company by not buying any of its products, or that a customer would have difficulty identifying Land O’ Lakes’ dairy products because he had seen the LAND O LAKES mark used on Hugunin’s fishing tackle. Land O’ Lakes products are advertised on their labels as dairy or other food products (such as instant cappuccino mixes), never as products relating to fishing.

RDC-greySo, trademark lawyers:  Now you’ve got Judge Posner — notwithstanding … um, the other stuff — and you’ve got Prof. McCarthy, so motivated about this that he’s coming to us practically live and in real time through the good offices of John Welch — banging your heads against the wall on dilution:  Dilution does not grant famous trademarks quite the monopoly its holders think it does.  The junior user’s conduct has to cause some kind of trademarky damage to entitle your markholder to relief, including a successful opposition.

And if based on your zealous and thorough analysis you find that it doesn’t, don’t be sad. You may not earn a bunch of fees, but you’ll earn your client’s admiration and long-term trust by laying all the above and saying, “There’s no need to spend money suing here, because we have something even better than an injunction:  A trademark that is so great, so distinctive in its market, that it isn’t being harmed at all by what that other guy is doing.  But we do recommend that you keep an eye on it, or tell us how we can do so for you, in case anything changes.”

I’m just saying.

Ah, but what if the client is contemplating a TTAB opposition?  Can trademark counsel, in good faith, say, “Well, under the standard the TTAB has been applying you can oppose successfully.  On the other hand, Professor McCarthy thinks the TTAB is wrong.”

Can you just say “Professor McCarthy said the TTAB is wrong on John Welch’s blog”?

No, but you can say this to your client, and I’m not sure how you can say otherwise:

Under the standard the TTAB has been applying, a lot of parties situated similarly to you right now have opposed successfully. On the other hand, there has been some pushback on this issue.  The fuss has kicked up to the extent where the leading academic authority on trademark law, Professor J. Thomas McCarthy — whose treatise can be quoted in a brief at least as authoritatively as a district court case and as many circuit courts too — has not only been on the warpath on the topic, but has even started what could be described as an online ‘campaign’ at the leading blog covering TTAB practice criticizing their approach.

The TTAB may not pay attention to Prof. McCarthy’s drumbeat on this topic today, or ever.  But he is not alone in his view, and sooner or later, it is possible that the TTAB will reverse itself, or a court, on appeal, will reverse the TTAB, based on his line of criticism.

So yes, we can file the opposition, but the chances are better than ever that our adversary will be aware of this debate, and will bring it to the TTAB’s attention.  Just as proceeding with any opposition or litigation is a calculated risk, this is too, but the odds may be shifting, and we may not want to become famous for being named in the caption of the case where the TTAB does a U-turn.  Having said that, we don’t know — the TTAB is well aware of this view, and may proceed unmolested and unreversed for many years to come.

Flowers and Tower, Lower Manhattan
Where I do it.

The choice is yours.

Anyway, if I thought he were reading this as he evidently reads John Welch’s blog, I’d say, thanks, Prof. McCarthy, for engaging in this manner, which in no way diminishes your stature.  It only demonstrates that you care a whole hell of a lot about trademark law for its own sake.  And thanks, John, who I know also does.

As for me, well, I just know that I love what I do!

Ron Coleman

I write this blog.

2 Replies to “McCarthy speaks

  1. The SDNY also recently ruled like McCarthy in a TM case (I think the judge even cited McCarthy).

    Given that not only McCarthy but several federal courts have disagreed with the TTAB, I am surprised that no one has appealed the issue to the Federal Circuit. (BTW, in the Omega case, the Board eventually granted summary judgment to the applicant, so the whole legal issue ended up making no difference).

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