25
Jan/07

Whose 'Famousness' Is It?


Facts: Masquelier invents a process for deriving a natural extract, and sells it in France under the PYCNOGENOL name. Horphag sells the product in the US under contract with Masquelier. They have a falling out and Horphag obtains the US registration in his own name. Garcia, a new distributor for Masquelier, begins selling a competing party in the U.S. Horphag sues Garcia for trademark infringement and dilution after Garcia reproduces the PYCNOGENOL name in several problematic ways (for example, as a meta-tag).
In his defense to the dilution cause, Garcia argues in part that the fame of the PYCNOGENOL mark in the U.S. (it is apparently a best-selling suppement) derived from Masquelier’s original work. Here is the Ninth Circuit analysis:
“Garcia also challenges Horphag’s dilution cause of action
by claiming that he should not be liable for trademark dilution
when the Pycnogenol trademark had already been diluted
prior to his use. In Garcia’s opposition to summary judgment,
he argued that the “famousness of [Horphag’s] ‘Pycnogenol’
is derived from . . . [and] rel[ies] upon the famousness of the
Masquelier ‘Pycnogenol.’ ” He appears to raise the same issue
on appeal by arguing that Horphag is capitalizing on Masque-
lier’s good will and popularity, rather than the other way
around.
We disagree. Garcia has not presented any evidence show-
ing that the Masquelier’s product enjoys any fame in the
United States that is independent of Horphag’s Pycnogenol
mark. It is Horphag’s product that is a “buzz item” in the
United States, not Masquelier’s. It is Horphag that has
invested in research and marketing to increase the “famous-
ness” of its product in this country, not Masquelier. Hor-
phag’s Pycnogenol trademark is famous not because of a
French product, but because of Horphag’s own investment in
advertising, research, and quality control.
COMMENT: It’s interesting how the Court is looking out at fame. At least the first six years of Horphag’s use in the U.S. was ‘under contract’ with Masquelier. We don’t know precisely how Horphag was able to register the name in 1993 under his own name. One would have to assume that during that prior to that time, however, Horphag, as a distributor, would have identified Masquelier as the source of the product in some way (at least to promote him as the inventor). From a ‘moral’ point of view, Horphag’s fame may well rest on a foundation created by Masquelier. From a trademark dilution point of view, it may be completely correct to say that today, no one in the U.S. is aware of MAsquelier’s role in creating PYCNOGENOL.
PRACTICE POINT: NEVER LET YOUR FOREIGN DISTRIBUTORS OWN YOUR TRADEMARK!
PRACTICE POINT #2: Repeat after me: “ALL USE OF THE MARK INURES TO THE USE AND BENEFIT OF LICENSOR.”

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