Dilution & the Trademark Trial & Appeal Board (TTAB)

The TTAB recently handed down its precedential decision in Nike, Inc. v. Peter Maher and Patricia Hoyt Maher, 100 USPQ2d 1018 (2011).  In this decision, the Mahers filed an application to register the mark JUST JESU IT in connection with items of clothing, including t-shirts and caps.  Nike opposed registration based on its prior rights to the mark JUST DO IT.  Nike claimed, in part, that the Mahers’ mark was likely to dilute the distinctiveness of JUST DO IT.  The TTAB agreed and refused registration of the Mahers’ application.

The TTAB and federal courts are free to consider any relevant factors when making a determination as to whether a junior user’s mark is likely to dilute a senior user’s famous mark.  The factor most frequently in dispute, however, is the degree of similarity between the marks.  Prior to 2006, virtually all jurisdictions required that a junior user’s mark be “essentially the same” as the senior mark.  Under this standard, dilution claims often failed based on seemingly insignificant differences in the marks.  For example, in 2001, the TTAB held that “ToroMR” was not sufficiently similar to the senior mark “Toro.”  See Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (2001).

The “essentially the same mark” standard was called into question in 2006 with the enactment of the Trademark Dilution Revision Act (TDRA).  The TDRA, for the first time, provided a statutory definition of dilution by blurring.  This definition states that dilution may exist based on the mere “similarity between a mark … and a famous mark…” (emphasis added).  Interpreting this language, federal courts began to overturn the “essentially the same mark” standard, finding a likelihood of dilution to exist even where arguably significant differences existed between the subject marks (e.g., CHARBUCKS found likely to dilute STARBUCKS).

While federal courts adapted their tests for dilution in response to the TDRA, the TTAB resisted.  As recently as 2010, the TTAB continued to cite pre-TDRA decisions to support the “essentially the same mark” standard.

With its decision in Nike, however, the TTAB officially announced that it was abandoning the “essentially the same mark” standard in favor of the mere similarity standard prevailing in federal courts.  Using this standard, the TTAB found that the JUST JESU IT mark was, in fact, likely to dilute the distinctiveness of JUST DO IT because, “upon encountering applicants’ mark, consumers will be immediately reminded of [Nike’s mark] and associate applicants’ mark with [Nike’s] mark.”

The TTAB has heard dilution claims for approximately 12 years.  In that time, it has sustained claims of dilution on only three occasions.  While it remains to be seen for certain, the Nike case suggests that the TTAB’s resistance to dilution claims is waning and that additional sustained claims of dilution may be on their way.

Despite the revised standard announced in Nike, mark owners and trademark counsel alike should always keep in mind that dilution claims require that an opponent’s mark be “famous.”  For purposes of dilution, the standard for “fame” is quite high, and niche fame, or fame within a certain subgroup of consumers, will not suffice.

Jeffrey Fridman

About Jeffrey Fridman

Jeffrey Fridman is an associate in the Triangle office practicing in the Intellectual Property group. Since joining the firm, Mr. Fridman focuses his practice in the areas of domestic and international trademark prosecution and protection, trademark opposition and cancellation, copyright, intellectual property licensing and transactional work.


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