Since the mid-1990's it's been a violation of federal law to use a mark for goods and services that dilutes a "famous" mark. It was thought that selling goods under the name "Kodak" was a bad thing if you weren't Eastman Kodak, even if what you were selling was cars or toilet paper or bee pollen. If the goods for sale had to do with imaging, then it would be in infringement under existing law, because there was a likelihood that consumers would be confused bout source of the goods. Traditional trademark law is all about confusion over the source of goods, classed into categories or types of goods.
However, as marks became famous, mark owners didn't like other companies to use marks that made the famous weaker (the mark owners argued), even where there was no likelihood of confusion. Congress listened.
The Statute:
http://www4.law.cornell.edu/uscode/15/1125.html
15 USC 1125(c)(1):
"The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is provided in this subsection. In determining whether a mark is distinctive and famous, a court may consider factors such as, but not limited to -
(A)the degree of inherent or acquired distinctiveness of the mark;
(B)the duration and extent of use of the mark in connection with the goods or services with which the mark is used;
(C)the duration and extent of advertising and publicity of the mark;
(D)the geographical extent of the trading area in which the mark is used;
(E)the channels of trade for the goods or services with which the mark is used;
(F)the degree of recognition of the mark in the trading areas and channels of trade used by the marks' owner and the person against whom the injunction is sought;
(G)the nature and extent of use of the same or similar marks by third parties; and
(H)whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.
A store in Kentucky was using the name Victor's Secret to sell sexy women's underwear, as well as sex toys and the like. Victoria's secret, which has stores in Kentucky, objected. Victor changed the name to Victor's Little Secret. Not good enough, Victoria's Secret said.
Victoria's Secret won at the lower courts, but the case worked its way up to the US Supreme Court. Here's the URL for the opinion.
The opinion:
http://www.supremecourtus.gov/opinions/02pdf/01-1015.pdf
http://news.findlaw.com/ap_stories/a/w/1154/3-4-2003/20030304083004_35.html
http://www.goldsteinhowe.com/blog/archive/2003_03_02_SCOTUSblog.cfm
Here's the major legal interpretation that, at least initially, matters, based on the opinion. Actual dilution is what the statute requires. Some circuit courts of appeal had said that likelihood of dilution was enough, but now the Supreme Court has said those courts were reading the statute incorrectly. Actual dilution is what counts.
How will lawyers show actual dilution? They will have to get results from consumer surveys that show in some manner that a previously strong mark is in some way weaker in a manner that is tied to the junior user's adoption of the mark.
http://www.abanet.org/journal/ereport/m7secret.html
"Victor" is different from "Victoria." Victoria's secret failed to show actual harm or dilution from Victor's Little Secret's presence in the marketplace. This ruling will place a premium on consumer surveys in litigation.
http://www.law.com/jsp/article.jsp?id=1046678420567
3:47:36 PM 
|
