When it comes to trademarks, there’s famous, and there’s famous.
As Professor Tom McCarthy explains, via John Welch, one kind of trademark famous is the kind your trademark has to achieve in order to qualify for protection under the federal trademark dilution statute. The other kind is the kind of famous that arises in the context of the LIKELIHOOD OF CONFUSION inquiry — what most circuits call “strong,” but which in the Federal Circuit and (hence) the Trademark Trial and Appeal Board is called “fame.”
And we’re not even talking about the kind of trademark famous they now call “well known.”
Anyway, the story is this – as set up by John and clarified by Professor McCarthy:
As you will recall, [last year] the CAFC overturned the Board’s decision of July 6, 2015 (here) dismissing a petition for cancellation of a registration for the mark ALEC BRADLEY STAR INSIGNIA for “cigars, tobacco, cigar boxes, cigar cutters and cigar tubes.” The Board had found that respondent’s mark was not likely to cause confusion with petitioner’s registered mark INSIGNIA for wines. Concluding that the Board had applied an “incorrect standard for fame,” the CAFC remanded the case to the TTAB for determination utilizing the correct standard.
The CAFC pointed out that, unlike for dilution, fame for likelihood of confusion purposes is not an “all-or-nothing” proposition. Consequently, the Board “did not properly apply the ‘totality of the circumstances’ standard, which requires considering all the relevant factors on a scale appropriate to their merits.”
According to Professor McCarthy’s commentary:
[U]nlike all other courts in the nation, the Federal Circuit and the TTAB usually use the word “fame” instead of “strength.” This has led the TTAB to ask if the senior user’s mark is or is not in a category of “famous” marks, rather than asking if the mark is strong enough that the junior user’s mark is likely to cause confusion. The federal anti-dilution law mandates that a mark must be so widely known to everyone across the United States as to be in the category of “famous” marks. But for traditional trademark infringement, the “strength” of a mark is measured on a graduated scale and not by two categories of “strong” and “weak.”
I refer you to John’s post for a small point of contention between him and Professor McCarthy regarding the significance of this decision with respect to this fine point of terminology — an “eccentric usage,” McCarthy explains, that “can be traced back to the original 1973 Du Pont precedent. There, the court listed as the fifth factor the “fame” of the mark, not the “strength” of the mark.”
There’s also a noteworthy dissenting opinion by Judge Newman regarding two other LIKELIHOOD OF CONFUSION criteria she thought were mishandled by the TTAB: “Relatedness” of goods and the, um, related consideration of the channels through which the goods are sold. (John briefly addressed this in his original 2017 post about the Federal Circuit decision.)
What’s the takeaway, as they say? If I may:
If the TTAB missed this, anyjudge could miss this. And they do, because the words “fame” and “famous” are thrown around by trademark plaintiffs all the time, including in initial pleadings and motions for preliminary relief where trademark dilution is not a claim, or not a serious claim.
It’s almost impossible to resist the temptation to call a run of the mill mark “famous,” because — just as the DuPont court did — “famous” suggests “strength.” Strength is merit; strength is righteousness; and the strength that comes from fame — for what else is secondary meaning? — translates, subliminally, to entitlement to all kinds of relief. Just as tall people are assumed to rock, strong, famous marks are here in court to get the respect from the law to which they are presumptively entitled!
So this confusing, non-technical use of a term, “fame,” that can be loaded with legal meaning is just plain likely to confuse judges, most of whose experience with trademark law is limited. And the INSIGNIA decision reminds us it can even confuse judges in the TTAB.
With that in mind, advocates who sense this confusion arising now have, by way of citation to the INSIGNIA decision, a way to gently remind the honorable court of this distinction.
No sense in achieving the wrong kind of fame, even if you’re a judge.
