Re: New Work Types Problem (Was: Dead Sea Scrolls, Sweat of Brow Once Again)

On 3/2/98, Mark Lemley <mlemley[_at_]mail.law.utexas.edu> wrote:
>
> Here's my own particular dilution pecadillo: say Delta Airlines and
> Delta Dental both claim their mark "Delta" is famous [not an
> unreasonable claim]. If one is famous, can't they prevent the
> other from using the mark at all? Is there some sort of "status quo
> freezing" that occurs at the time the Act was passed? Alternatively,
> does the fact that two companies could plausibly claim the same word
> to be famous mean that in fact neither of them is famous?

I, too, have a pecadillo about the dilution act. Perhaps they're related? I find it odd that one of the factors in making a determination whether a mark is "famous" is:

   "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" In other words, the identity of the defendant has a bearing not on whether dilution has occurred, but on whether the plaintiff's mark is "famous". This suggests that a particular mark can be "famous" in one case, and then found to be NOT famous in the next.

It also suggests a route to an answer -- though not a good or satisfying one -- to Mark's question: "Delta Airlines" may be a famous mark in a suit against United Airlines, but might not be famous in a suit against Delta Dental.

-Ari

Ari Kahan
<akahan[_at_]netcom.com>

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