Alexndra Roberts: “New-School Trademark Dilution: Famous Among the Juvenile Consuming Public“:
The recently enacted Trademark Dilution Revision Act of 2006 recali-
brated the degree of fame necessary to garner protection: the TDRA applies
only to a mark “widely recognized by the general consuming public of the Unit-
ed States as a designation of source of the goods or services of the mark’s own-
er.” By privileging those major players who succeed in turning their brands into
household names, the TDRA strengthens incentives for mark-owners to ensure
their logos and brand names are well-recognized not only among adult consum-
ers, but also among children. This Article examines a set of marketing beha-
viors aimed at children that the TDRA’s revised fame standard both reflects and
rewards. Deeming fewer marks famous may serve the immediate purpose of
creating a higher bar for plaintiffs to successfully bring dilution claims, but that
bar should be set at age twenty-one to avoid rewarding firms for making loyal
consumers out of teenagers, tweens, kids and even infants.
When Christina and Patrick Vitagliano dreamed up their Monster Mini Golf franchises — 18-hole, indoor putting greens straddled by glow-in-the-dark statues of ghouls and gargoyles — they never imagined that a California maker of high-end audio cables would object.
But Monster Cable Products Inc., which holds more than 70 trademarks on the word monster, challenged the Vitaglianos’ trademark applications. It filed a federal lawsuit against their company in California and demanded the Rhode Island couple surrender the name and pay at least $80,000 for the right to use it.
If you thought, from the headline, that this was about Monster, the employment listings company, it isn’t.
Art Van sells furniture. Truck is pictured above. Hershey protested. Interestingly, this complaint contains, in addition to trade dress claims, a conversion claim. Conversion usually involves defendant maintaining control over a chattel. I’m aware of conversion theories applied to intangible property but usually where a chattel bears a relationship to a property right (such as a security certificate or a domain name). If you’re familiar with the use of conversion as applied to trademarks, please leave a comment.
In any event, Hershey obtained a TRO against use of the truck on its ‘dilution by blurring’ theory. Complaint and decision below (I think there is a mistake on page 29, para. E of the decision, that says Defendant when I think the Court meant Plaintiff).
Still kicking around. The discussion of retroactive application of TDRA and the likelihood of this thing called dilution standard begins on page 5. Background from 2003 Supreme Court case here.
SDNY: On remand, the Charbucks Marks does not dilute Starbuck’s famous mark even under the TDRA. See Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., Case No. 01 Civ. 5981, 2008 U.S. Dist. LEXIS 44147 (S.D.N.Y. June 5, 2008).
Commentary by the Las Vegas Trademark Attorney.