The Trademark Trial and Appeal Board has released its first decision evaluating dilution as grounds for an opposition since the Supreme Court issued Mosely, holding that a plaintiff alleging dilution under FTDA must establish that defendant’s activities caused actual dilution. Here, the Board held that just as it is prepared to evaluate likelihood of confusion with regard to ITU applications for marks that have not yet been used, the Board is prepared to evaluate the likelihood of dilution for such applications.
Here, the Board found that the Nasdaq Stock Market’s NASDAQ mark was famous, and was likely to be diluted by applicant’s NASDAQ mark for sporting goods and clothes. Applicant alleged that it had chosen NASDAQ as an acronym for Nouvi Articuli Sportivi di Alta Qualita, or New High Quality of Sporting Goods. It did not explain how it arrived at its second choice, NAFTA.
Nasdaq Stock Market v. Antartica, Opp. 91121204 (TTAB June 30, 2003).
Thanks to John Welch for the pointer.