Trademark and Unfair Comp.

1
Trademark and Unfair Comp.

• Boston College Law School
• November 9, 2004
• Dilution (contd)

2
Federal Dilution

• Lanham Act 43(c)
• (1) The owner of a famous mark shall be entitled
  to an injunction against another persons
  commercial use in commerce of a mark if such
  use causes dilution of the distinctive quality
  of the mark .

3
Nabisco v. PF Brands
4
Dilution Factors

• From Mead v. Toyota (Sweet, J., conc.)
• Similarity of marks
• Similarity of products
• Sophistication of consumers
• Predatory intent
• Renown of senior mark
• Renown of junior mark

5
Ringling Brothers v. Utah
6
Actual vs. Likelihood

• 4th 5th Circuits
• Actual dilution
• Actual proof of harm

• 2d 7th Circuits
• Likelihood of dilution
• Can use contextual factors

• 6th Circuit
• cert. granted

7
Panavision v. Toeppen
8
Federal Dilution

• Lanham Act 43(c)(1)
• In determining whether a mark is distinctive and
  famous, a court may consider factors such as, but
  not limited to
• distinctiveness
• duration and extent of use
• duration and extent of advertising
• geographical extent of trading area
• channels of trade
• degree of recognition
• nature and extent of use by third parties
• registration

9
Avery Dennison v. Sumpton
10
Famous?

• Arthur the Aardvark
• Clue (board game)
• Candyland (board game)
• Hotmail (website)
• Childrens Place (store)
• The Sporting News (mag)
• WaWa (grocery)
• Star Market (grocery)

• Famous
• Not famous
• Famous
• Famous
• Not famous
• Famous
• Famous
• Not famous

11
I.P. Lund v. Kohler
12
Design Dilution?
13
Administrative Details

• Next Assignment
• VII.C - Comparative and False Advertising