Parlous times for trademark dilution

Indeed.  If you’ve been following the action at all here, I’ve been watching with barely restrained glee as specious trademark dilution claims have gotten hammered by the courts recently.

The recent dings I linked to above have been based on core deficiencies of the respective complaints, and constitute classic IP overreaching or, as they used to say (you’ll notice the term has more or less disappeared), trademark bullying — that is, a very big company makes a claim sounding in infringement against a must smaller one, merits be damned.

bl-marksIn contrast, the infringement claim tweeted and linked to by Eric Ball a couple of days ago in the embedded tweet above, Bentley v. NBC Universal (CV 16-03693 TJH (KSx), C.D. Cal., Sept. 28, 2016), reported in popular media when the case was filed in articles such as this one, fell victim to a different flaw:

In 2006, Congress revised 15 U.S.C. § 1125(c), the trademark dilution statute, to specifically exclude dilution protection for marks whose fame extended only to niche markets. Dan-Foam A/S v. Brand Named Beds, LLC, 500 F. Supp. 2d 296, 307 n. (S.D.N.Y. 2007). The 2006 revision defined famous trademarks as those that are “widely recognized by the general consuming public of the United States.” 15 U.S.C. § 1125(c)(2)(A). “One of the major purposes of the . . . [revision] was to restrict dilution causes of action to those few truly famous marks like Budweiser beer, Camel cigarettes, Barbie Dolls, and the like.” Bd. of Regents, Univ. of Tex. Sys. ex. rel. Univ. of Tex. at Austin v. KST Elec., Ltd., 550 F. Supp. 2d 657, 679 (W.D. Tex. 2008) (citations omitted). The revision formally matched the statutory language to the limitations previously imposed by courts in cases such as the Ninth Circuit’s Thane Int’l.[, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 911 (9th Cir. 2002).] . . .

Here, Bentley and O-Line failed to sufficiently allege facts to demonstrate that their marks are famous. Bentley and O-Line allege that their LB marks are recognized by people interested in football, sports performance, and fitness training. However, recognition in a niche market or among a limited segment of individuals does not satisfy the “widely recognized by the general consuming public of the United States” requirement of 15 U.S.C. § 1125(c)(2)(A). Moreover, Bentley and O-Line did not allege any supplemental facts regarding the extent of their marks’ advertising, publicity or sales. Thus, the allegations are not sufficient to conclude or infer that the LB marks are famous. Accordingly, O-Line and Bentley do not allege “enough facts to state a claim to relief that is plausible on its face.” Twombly, 550 U.S. at 570.

Good; fine.  What’s notable here, perhaps, is that the court construed “people interested in football, sports performance, and fitness training” as a niche market.  That’s somewhat surprising to me, and contains a warning to those drafting dilution complaints:  If your market is big enough not to be construed as niche, avoid limiting language such as that used here if you can under Rule 11 or, alternatively, add facts that can, in good faith, bootstrap the description of the market in which your mark is recognized out of the niche.

If you must, that is.

Ron Coleman

I write this blog.

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