Seattle Trademark Lawyer

On March 28, the Southern District of Texas granted a preliminary injunction in Pet Silk, Inc. v. Jackson, No. 06-2465, __ F.Supp.2d __, 2007 WL 951635 (S.D. Tex.), against two defendants based on the Trademark Dilution Revision Act. In doing so, it became the first district court to interpret the lessened burden of proof in a favor of the plaintiff.

Plaintiff Pet Silk (PSI) sells pet grooming products through distributors worldwide. It is the exclusive licensee of the registered trademark PET SILK. Defendants Robert and Maria Jacobson, doing business as MJM Company, were an approved distributor of PET SILK products for four years. MJM operated and continues to operate several websites, including www.petsilkonline.com and www.mjm-petsilk.com.

In July 2006, Pet Silk ended its relationship with MJM. With the exception of posting a disclaimer on one of its websites, however, MJM continued to hold itself out as a distributor or reseller of PET SILK products. Thereafter, Pet Silk brought suit and moved for a preliminary injunction seeking to enjoin MJM from using PET SILK in its domain name, from holding itself out as being authorized to sell PET SILK products, and from representing it has the capacity to enter into distributorship agreements where MJM would act as a wholesaler with the customer as a sub-distributor. The court granted the motion based on theories of infringement, dilution, and cybersquatting. 

Of particular interest is its analysis of the new dilution statute, discussed below.

To prove dilution, the court found Pet Silk needed to show: (1) its mark is famous and distinctive; (2) MJM adopted the mark after the mark had become famous; and (3) MJM caused a likelihood of dilution of the PET SILK mark.

First, even though MJM did not dispute that PET SILK was famous, the court considered whether the mark met the statutory definition. It found:

“The Pet Silk® mark has been registered on the Principal Register of the United States Patent and Trademark Office for the last 10 years and has been in use for the last 15 years at least. PSI has distributors all over the world. PSI testified, and MJM does not contest, that Pet Silk® has name recognition in the pet supply and dog grooming market. And, the Fifth Circuit has held that market fame is sufficient. [Note that this finding is likely error — though perhaps harmless — since the TDRA abolished niche market fame.] PSI has not licensed the use of its name in the domain of any of its distributors save a few in Europe that deal exclusively in Pet Silk® products. Therefore, the mark meets [15 U.S.C.] § 1125(c)(2)(A)’s definition of famous.”

The court also found “[t]he mark Pet Silk® is at least a suggestive mark, and therefore inherently distinctive.”

Second, the court found: “PSI has shown that its mark has been registered for 10 years. MJM and PSI did not enter into a distributorship relationship until 4 years ago. Absent evidence to the contrary, the court may presume that MJM adopted the mark after the Pet Silk® mark became famous.”

Third, the court addressed whether Pet Silk had established dilution by blurring. After reciting the six factors for dilution for blurring set forth in 15 U.S.C. § 1125(c)(2)(B)(1), the court found:

“The two marks are similar since MJM has incorporated Pet Silk® as part of its web domain name. And, in phone calls with potential Pet Silk® distributors, MJM has held itself out to be Pet Silk itself. So, the marks are similar because they are, in fact, the same mark. As discussed above, the Pet Silk® mark has achieved distinction in its market. Pet Silk® is internationally known for its pet-grooming products. Moreover, there can be no doubt that MJM intended to create an association with Pet Silk® when it put the name in its domain. MJM went so far as to set itself up as a type of “sub-wholesaler” by offering a reseller agreement to its customers.”

Finally, the court found: “[T]here was testimony at the hearing that actual association did occur. Some customers, upon calling the MJM number, were told by Maria Jackson that the only way to be become a Pet Silk® distributor was through her. MJM does not refute this testimony, but argues merely that [an]injunction is inappropriate because MJM has removed the reseller agreement from its web site and no longer offers reseller status to customers. Nevertheless, Pet Silk has demonstrated that MJM’s use of its mark meets all the factors under § 1125(c)(2)(B)(1).”