Re: Trademark dilution

On 3/16/98, Mark Lemley <mlemley[_at_]mail.law.utexas.edu> wrote:
>
> Carl Oppedahl <carl[_at_]oppedahl.com> writes:
> >
> > This highlights what I see as a major problem with the Federal Trademark
> > Dilution Act.
> >
> > Yes, it seems lots of people agree that a "mark that stands alone"
> > (namely a unique, generally coined mark) ought to be able to be
> > protected against loss of uniqueness. An oil company that calls itself
> > "Exxon", and that thus did not attempt to appropriate a dictionary word
> > and deny use of the dictionary word in commerce in pereptuity, ought to
> > be able to keep others from using its unique, coined word.
> >
> > But the FTDA does not only give its sweeping powers to holders of
> > unique, coined marks. It offers its threat of strong remedies to
> > *anyone* who *thinks* that his or her trademark is "famous", and since
> > there is no definition of "famous" in the Act, it is difficult to
> > imagine getting such a case dismissed except at prodigious expense.
> > Many of the highest-visibility cases in which the FTDA has been asserted
> > are cases in which the mark was non-unique and non-coined.
> >
> > As an example: Hasbro asserting the FTDA against Clue Computing, Inc.
> > because of its trademark in "Clue", a board game for children.
> >
> > Prince Sporting Goods (a maker of tennis rackets and the like) asserting
> > the FTDA against Prince PLC, a provider of computer software training
> > services.
> >
> > Neither "Clue" nor "Prince" is a "mark that stands alone", yet the FTDA
> > offers such plaintiffs the sort of remedies that are probably
> > justifiable only for a "mark that stands alone".
> >
> ***********
>
> Not to detract from Carl's argument, which I think is correct, but
> the statute *does* define "famous" by reference to a list of eight
> nonexclusive factors. 15 U.S.C. sec. 1125(c). Of course, this may
> *overdefine* the term. . .

Well, but the Act is silent on how the eight factors are applied. Is one factor enough? Two factors? And in any event the factors seem to admit any and all non-unique non-coined trademarks to be eligible for the Act's sweeping remedies, remedies which an earlier commentator thought ought to be available only to "marks that stand alone".

Carl Oppedahl
<carl[_at_]oppedahl.com> Received on Mon Mar 16 1998 - 21:24:48 GMT