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.).