This is becoming a pet peeve of mine.
Actually, it’s more than a pet peeve. I think it’s a Rule 11 violation: pleading dilution as a cause of action when the mark at issue isn’t even colorably famous.
When the Trademark Dilution Revision Act was enacted, on October 6, 2006, Congress set a high standard for the amount of fame a mark must have before its owner can benefit from the super-trademark protection the dilution statute provides.
It states: “a mark is famous if it is 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.” See 15 U.S.C. § 1125(c)(2)(A). In other words, it needs to be a household name.
The statute provides guidance for determining nationwide fame, including: “The duration, extent, and geographic reach of advertising and publicity of the mark”; “The amount, volume, and geographic extent of sales of goods or services offered under the mark”; “The extent of actual recognition of the mark”; and whether the mark is registered on the Principal Register. Id.
Gone is regional fame. Gone is niche market fame. If the mark isn’t “widely recognized by the general consuming public of the United States,” it’s not a famous mark.
Yet, how often do plaintiffs assert a claim for dilution as a knee-jerk analog to their claim for trademark infringement? In my experience, all too often.
The dilution amendment is now more than five years old. I think it’s high time plaintiffs respect it in their pleading or suffer the consequences for failing to do so.
I don’t think this view is harsh. It’s just what Congress provided.