15
Aug/02

Giant Lizard Lessens Capacity of Trademark to Distinguish Origin!!!


Three things have been annoying me about the DAVEZILLA mess.  The first is that I can’t get the Blue Oyster Cult song out of my head every time I read something on this.

The second thing is that the news accounts aren’t precise.  The demand letter doesn’t say that DAVEZILLA infringes GODZILLA.  The letter alleges that Dave referred to his lizard figure as GODZILLA (a fact I believe Dave denies), and that the use of a lizard named GODZILLA on a site named DAVEZILLA is infringing.  The letter does not ask that Dave change the name of the site, merely that he stop using the lizard.

I won’t comment on Toho’s infringement claim – I just note that I have seen incorrect characterizations of the claim and the relief requested.

Third, the news accounts are focusing on the infringement aspect – namely whether someone believes whether the DAVEZILLA website somehow originates with or is endorsed by Toho.  Many observers undertandably conclude: “no way anybody is confused” and view the claim as frivolous, and that this is a form of corporate bullying. (Toho did fail to stop BAGZILLA for “monstrously strong bags” on an infringement theory).

However, it may be the case that the use of DAVEZILLA with use of lizard imagery (I typed Lizardry just now by accident), might cause damage (perhaps not actionable damage) by diluting the mark.  It’s not a question of confusion and a disclaimer doesn’t solve the problem.

I note that the attorney for Toho did not mention the dilution prong of the Lanham Act in the demand letter.  Nevertheless, it can be argued that the use of the lizard figure in connection with the term DAVEZILLA might be dilutive, not by tarnishment, but by blurring the ability of GODZILLA to act as a strong distinct mark.  Whether it’s too late for Toho to stop third party -ZILLA marks (there are already third-party federal trademark registrations for -ZILLA marks, and multiple third-party usages (it’s unclear what is the present status of MOZILLA ), is the question (but it’s not a frivolous question). 

As an aside, There is an aspect of policing “blurring” dilution where the recipient of the demand letter feels that he/she is the one driver the cop pulled over when everybody was speeding.

For more on dilution, start with articles by Jerre Swann of the Kilpatrick Stockton firm.

My take on the -ZILLA thing?  In the age of the blog, the trademark lawyer has to be extremely cautious as to how to proceed, because a subtle claim can become a public brouhaha (and in fact the shrewd defendant will want it so).

BYSTANDER DISCLAIMER: I try not to comment on the specifics merits of pending disputes as I just don’t know the full story.

 

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