Things are happening fast on the dilution front. On February 27, the Eastern District of California denied cross-motions for summary judgment on Nike’s dilution claim in Nike, Inc. v. Nikepal Int’l, Inc., No. 05-1468, 2007 WL 609864 (E.D. Calif). This appears to be the fifth case that either interprets or is controlled by the Trademark Dilution Revision Act. Unfortunately, it does not shed too much light on the statute’s new standards.
The well-known shoe manufacturer sued Nikepal Int’l, an importer, exporter, and distributor of syringes, valves and cardboard boxes, on a number of trademark theories stemming from the defendant’s use of NIKEPAL as a trademark. Both parties moved for summary judgment on Nike’s claim of dilution by blurring. In support of its motion, Nike submitted survey evidence allegedly indicating “a substantial majority of laboratory equipment purchasers think of NIKE” when encountering defendant’s website.
Defendant contended the survey was flawed “because it was only directed to Defendant’s website which is not ‘a service mark which is in issue in this action.’” Defendant also argued that since it was a telephone survey, it did not present defendant’s mark in the context in which it is used.
Judge Garland Burrell, Jr., refused to decide the matter on summary judgment because defendant’s criticisms of the survey “show that genuine issues of material fact exist as to the weight it should be given.”
In the court’s words: “[A] reasonable juror might ultimately [find] that the survey d[oes or does] not [support Plaintiff’s contention that its mark was diluted]. But the juror could only have done so after considering conflicting evidence and deciding what weight to accord the survey…. This understanding describes the proper role for a trier of fact; it is not the role of a district court at the summary judgment stage where the issue is whether a triable issue of fact even exists” (quoting Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1263 (9th Cir. 2001) (brackets in original).
Accordingly, the court found that genuine issues of material fact “as to factors bearing on” the dilution claim precluded summary judgment for either party.