Seattle Trademark Lawyer

Plaintiffs are now 0-for-3 under the Trademark Dilution Revision Act, which lessened and clarified the amount of proof needed to establish a claim for federal dilution of a famous trademark. In Century 21 Real Estate LLC v. Century Surety Co., No. 03-0053, 2007 WL 433579 (D. Ariz.), the District of Arizona found that plaintiff did not establish a genuine issue of material fact that defendant’s use of CENTURY blurred plaintiff’s use of CENTURY 21.

In doing so, Judge Stephen McNamee reconsidered his March 2006 summary judgment dismissal of plaintiff’s dilution claim in light of the TDRA, which became effective October 6.

The court recognized the TDRA revised the Federal Trademark Dilution Act in “three significant ways: (i) a likelihood of dilution, rather than actual dilution, is now a prerequisite to establishing a dilution claim; (ii) courts may apply four factors to determine whether a mark is famous and protection is denied to marks that are famous in only ‘niche’ markets; and (iii) courts may apply six factors to determine whether there is a likelihood of dilution.”

The court noted: “[a]lthough the TDRA no longer requires actual dilution, the new law does not eliminate the requirement that the mark used by the alleged diluter be ‘identical,’ ‘nearly identical,’ or ‘substantially similar,’ to the protected mark.” Applying that standard, the court found that “there is no genuine dispute of fact that the mark “Century 21” is not substantially similar to the mark “Century.”

The court also noted that “[l]ike the substantial similarity element, the TDRA does not eliminate the requirement that consumers mentally associate the mark used by the alleged diluter with the protected mark.” The court found plaintiff failed this standard as well.

Finally, the court found plaintiff could not make out a case for likelihood of dilution based on the six-factor test. As the court summarized, “the main problem with [plaintiff’s] dilution theory is that [plaintiff] has never registered the term ‘Century’ alone, prohibits Franchisees from abbreviating or shortening the name ‘Century 21’ to ‘Century,’ and has not produced any survey information to demonstrate that consumers recognize or associate the term ‘Century’ (in isolation) with the mark ‘Century 21.’ Moreover, there is no dispute that the word ‘Century’ is extensively employed in both the real estate and insurance industries and therefore is clearly not distinctive.”

This decision follows the Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, and AutoZone, Inc. v. Strick cases (which STL discussed here), which likewise found that dilution had not occurred under the new standard. For dilution plaintiffs, maybe the fourth time’s a charm.