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

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?... Does the fact that two companies
> could plausibly claim the same word to be famous mean that in fact
> neither of them is famous?

In other words, is exclusivity of use a prerequisite for alleging the "fame" of one's mark? No. Lanham Act 43(c) does not require exclusive use. It does, however, list as one of the eight factors to be considered in determining whethera mark is "famous" the following:

"(H) the nature and extent of use of the same or similar marks by third parties."

Which I suppose invites the courts to ask the same question as Mark.

Bob Cumbow
<cumbr[_at_]perkinscoie.com> Received on Tue Mar 03 1998 - 20:48:36 GMT