This month’s INTA Bulletin announced: ”First Case Decided Under Trademark Dilution Revision Act Finds No Dilution” (International Trademark Association membership required). To date, two such cases have been decided. Both shed a little light on the post-Moseley v. V. Secret “likelihood of dilution” standard codified at 15 U.S.C. § 1125(c). However, still more light is needed.
In the first case, Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, No. 1-06-321JCC, 2006 WL 3182468 (E.D. Va.), defendants sold novelty pet products under the spoof trademark CHEWY VUITON. The Eastern District of Virginia looked to the Second Circuit for guidance on analyzing plaintiff’s claim of dilution in the context of defendants’ claim of parody. There, “the use of famous marks in parodies causes no loss of distinctiveness, since the success of the use depends upon the continued association with the plaintiff.”
Applying that authority, the court found “the mark continues to be associated with the true owner, Louis Vuitton. Its strength is not likely to be blurred by a parody dog toy product. Instead of blurring Plaintiff’s mark, the success of the parodic use depends upon the continued association with Louis Vuitton.” Therefore, the court dismissed plaintiff’s dilution-by-blurring claim on summary judgment.
As for dilution by tarnishment, the court found that plaintiff provided only a “flimsy theory” that “a pet may some day choke on a Chewy Vuiton squeak toy and incite the wrath of a confused consumer against Louis Vuitton.” The court concluded that no reasonable trier of fact could find for plaintiff based on such evidence, again justifying dismissal on summary judgment.
In the second case, AutoZone, Inc. v. Strick, No. 03-C-8152, 2006 WL 3626770 (N.D. Ill.), the Northern District of Illinois considered whether defendant’s OIL ZONE and WASH ZONE trademarks diluted plaintiffs’ AUTOZONE mark. The court recognized that under the TDRA, “a plaintiff can have a successful dilution claim regardless of whether it can show actual or likely confusion.”
However, the court found plaintiffs had not shown either. It found ”[a]lthough defendants have raised the issue of an inability to prove dilution, plaintiffs have made no attempt to show actual or likely dilution.” Plaintiffs said they planned to present circumstantial evidence of dilution but did not do so in response to the motion. Therefore, the court dismissed their claim on summary judgment.
When the TDRA was enacted, some feared that owners of famous marks would ride roughshod over owners of lesser-known marks. I don’t think that’s going to happen. These cases suggest that, at a minimum, plaintiffs alleging dilution need to establish nationwide fame and then prove with competent evidence that the defendant’s mark is likely to cause the plaintiff’s mark real harm. Speculation is not enough, and promises of future proof are not enough. Nor should they be.
It will be interesting to see what evidence courts accept as proof of likelihood of dilution — particularly at the appellate level.
For background on the TDRA, an article I wrote in October summarizing the Act is available here.