In Phase Forward Inc. v. Adams, plaintiff brought suit in 2005 against defendant Mary Noel Adams stemming from defendant’s use of the trademark PHASE FORWARD.
After the Trademark Dilution Revision Act was enacted in October 2006, defendant moved for summary judgment on the ground that plaintiff’s mark did not meet the amended definition of a “famous mark” as one “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.” In filing its dilution claim, plaintiff had relied on the Ninth Circuit’s previous recognition of niche-market fame as a valid form of dilution.
At the time of defedant’s motion, the Ninth Circuit had not addressed the issue of whether the TDRA would be applied retroactively, though the Second Circuit in Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 477 F.3d 765, 766 (2d Cir. 2007) (STL post here), had applied the TDRA retroactively. Based on that decision, plaintiff voluntarily withdrew its dilution claim.
Nine days after the court issued its order dismissing the claim, the Ninth Circuit decided Jada Toys v. Mattel, Inc., 496 F.3d 974 (9th Cir. 2007) (STL post here), in which the court reversed the district court’s grant of summary judgment on Mattel’s counterclaim for federal trademark dilution. The Ninth Circuit noted that because the action was filed before the 2006 amendment, the pre-TDRA version of 15 U.S.C. § 1125(c) applied to Mattel’s dilution claim. Similarly, plaintiff’s claim for federal trademark dilution under Section 1125(c) was filed before the enactment of the TDRA. Therefore, plaintiff moved the court to reconsider and vacate its order granting summary judgment and reinstate its dilution claim.
On Feb. 5, Judge Jeremy Fogel found that the Ninth Circuit’s decision in Jada Toys constituted an intervening change in controlling law, and granted plaintiff’s motion without prejudice to defendant’s right to seek summary judgment on another claim in the future.
This whole prospective vs. retroactive application of TRDA is confusing. I don’t think it should be. Is it too simplistic to think that decisions before October 6, 2006 — the date TDRA was enacted — should be based on the old standard, and decisions after that date should be based on the new?
And why do some courts focus on the date the lawsuit was filed? The TDRA states: “In an action brought under this subsection, the owner of a famous mark shall be entitled to injunctive relief as set forth in section 1116 of this title. The owner of the famous mark shall also be entitled to the remedies set forth in sections 1117(a) [providing for damages] … [if] the mark or trade name that is likely to cause dilution by blurring or dilution by tarnishment was first used in commerce by the person against whom the injunction is sought after October 6, 2006….” Based on this language, shouldn’t courts focus on when the mark was first used, not when the case was filed?
The case cite is Phase Forward Inc. v. Adams, 2008 WL 340951, No. 05-4232 (N.D. Cal. Feb. 5, 2008) (Fogel, J.).