Seattle Trademark Lawyer

More than nine months after the Trademark Dilution Revision Act (TDRA) became law, “niche market” fame under the Federal Trademark Dilution Act (FTDA) lives on — at least in one court. In Hodgdon Powder Co., Inc. v. Alliant TechSystems, Inc., the plaintiff sought damages and injunctive relief stemming from the defendant’s use of CLAY DOT for gunpowder, which plaintiff alleged diluted the fame of its CLAYS mark for gunpowder. Both sides moved for summary judgment. On July 20, the District of Kansas sided with the defendant on plaintiff’s dilution claim.

All of this is unremarkable except for the court’s analysis of the dilution claim under the Federal Trademark Dilution Act — the statute the Trademark Dilution Revision Act replaced last October. In a footnote, the court stated: “The parties agree that the Trademark Dilution Revision Act does not apply to plaintiff’s claims. The parties, and the court, rely on the law prior to the TDRA.”

Why did the parties and the court agree that the FTDA applied? The order doesn’t say. What’s clear is the court went on to analyze plaintiff’s claim to “niche market” fame, a dilution theory the new statute expressly abolished.

I’d think by now everyone would be on the same page about the TDRA. At least seven courts have rejected the FTDA’s standard in favor of the new standard the TDRA imposed. See, e.g., Century 21 Real Estate LLC v. Century Sur. Co., 2007 WL 433579, *1 (D. Ariz.) (“On October 6, 2006, the Trademark Dilution Revision Act of 2006 was signed into law and became effective immediately.”) (discussed here).

The first court to address the TDRA, Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 464 F.Supp.2d 495, 504 (E.D. Va. 2006) (discussed here), analyzed whether the statute should be applied retroactively. Under Landgraf v. USI Film Products, Inc., 511 U.S. 244, 114 S.Ct. 1483, 128 L.Ed.2d (1994), it found that when Congress has not proscribed an effective date, a court “must determine if the statute will ‘impair rights a party possessed when [it] acted, increase a party’s liability for past conduct, or impose new duties with respect to transactions already completed.’ If it does, then a court should not apply the new statute to the pending case. However, the Supreme Court also stated that ‘relief by injunction operates in futuro and the right to it must be determined as of the time of the hearing.’” Based on this authority, the Haute Diggity Dog court found: “[P]laintiff has pled for injunctive relief on the issue of dilution. Therefore, the amended statute will apply in this case.”

The plaintiff here likewise sought injunctive relief. Therefore, under the initial body of cases to interpret the new statute, it would seem that the TDRA would apply. Interestingly, the answer may differ with regard to plaintiff’s request for damages. See, e.g., Louis Vuitton Malletier v. Donney & Bourke, Inc., 2007 WL 1222589, *2 (S.D.N.Y.) (finding the TDRA is not retroactive for damages) (discussed here). With regard to plaintiff’s request for injunctive relief, however, niche market fame would seem to have no place in the analysis.

The case cite is Hodgdon Powder Co., Inc. v. Alliant Techsystems, Inc., No. 06-2100, 2007 WL 2079882 (D. Kan.).