« InsideCounsel Reports on Ninth Circuit's Perfect 10 Decision on Secondary Liability | Main | Court Refuses Summary Judgment Dismissal of Mother's Trade Dress Claims »

Applying TDRA Standard, Court Upholds Jury's Finding of Dilution

On August 20, the Central District of California upheld a jury’s finding that a plaintiff had proven its dilution claim by showing a mere likelihood of dilution. It may have been the first jury trial to consider a dilution claim under the lower standard of proof established by the Trademark Dilution Revision Act, which replaced the “actual dilution” standard required by the predecessor statute, the Federal Trademark Dilution Act.

In the case, plaintiff Eldorado Stone, LLC, and defendants Renaissance Stone, Inc., Alfonso Alvarez, and Rob Hager sold competing architectural veneer stone products. Plaintiff sold its products under the trademarks RUSTIC LEDGE and CLIFFSTONE, which it alleged were famous and diluted by defendants’ products sold under the trademarks CLIFFLEDGE and RUSTIC STONE.

In March, the jury found for the plaintiff. Defendants moved for judgment as a matter of law on the ground that plaintiff had not presented any evidence of actual dilution as required under Moseley v. V. Secret Catalogue, Inc., 537 U.S. 418, 433 (2003). Plaintiff responded that it needed only prove a likelihood of dilution under the Trademark Dilution Revision Act, which was signed into law on October 6, 2006.

Citing Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 477 F.3d 765, 766 (2d Cir. 2007), for the proposition that the “actual dilution standard under Moseley is no longer the standard and that likelihood of dilution is the standard,” the court found the jury’s finding of dilution was based on sufficient evidence. 

“Here, Eldorado presented sufficient evidence to show that Renaissance’s conduct lessened the capacity of Eldorado’s marks to identify and distinguish its products,” the court found. ”[Eldorado’s witness, Jamie Scholl] testified that he observed Renaissance’s products and product names and believed they were Eldorado’s products. Mr. Scholl also testified that he believed the names ‘Rustic Ledge Stone’ Rustic Stone’ were Eldorado’s products when they were Renaissance’s products. Such evidence supports the jury’s finding of a likelihood of dilution.”

The plaintiff also prevailed on a number of other claims, including trademark infringement.

While the court got the “likelihood of dilution” standard right, the plaintiff’s evidence still seems pretty thin. And what about the Trademark Dilution Revision Act’s requirement that a mark be “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner” to be considered famous? Anyone heard of RUSTIC LEDGE or CLIFFSTONE before? Not exactly household names.

The case cite is Eldorado Stone, LLC v. Renaissance Stone, Inc., No. 04-2562, 2007 WL 2403572 (S.D. Cal.).

Posted on August 27, 2007 by Registered CommenterMichael Atkins in | Comments1 Comment

PrintView Printer Friendly Version

EmailEmail Article to Friend

Reader Comments (1)

CLIFFSTONE seems to epitomize niche fame, as does PET SILK. I wouldn’t think the color yellow for slip-n-slides, nor even the “arcuate” stitching on the pocket of Levi’s jeans, were necessarily "widely recognized by the general consuming public of the US," either. What is your overall impression re: the elimination of niche fame-- do you predict the circuit split that existed under the FTDA will persist (albeit with a smaller number of courts allowing protection for niche fame), or a case-by-case mix? Will we get to a more brightline empirical rule at some point, so that courts will require survey evidence showing recognition by e.g. at least 70% of consumers? I wonder if it's troublesome that a good deal of recent cases skip over the fame analysis because the defendant doesn't contest it or the court finds it obvious.

AJR
February 21, 2008 | Unregistered CommenterAlex Roberts

PostPost a New Comment

Enter your information below to add a new comment.

My response is on my own website »
Author Email (optional):
Author URL (optional):
Post:
 
All HTML will be escaped. Hyperlinks will be created for URLs automatically.