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STL (Reader) on Infringement Safari

Coca-Cola or Chica-Locca?

A STL first: a reader’s infringement safari!

Seattle lawyer Kevin Halverson just returned from an enviable vacation to Mexico. “Warm-water surfing,” as he put it. Seriously, that right there is reason enough to practice law. I’m super-jealous.

But onto the infringement. The famous Coca-Cola logo morphs into “Chica-Locca” on trucks, t-shirts, and signs in Sayulita advertising the Chica Locca Magical Tour company’s boat tours, he says.

So what’s wrong with Chica Locca’s having a little fun with the Coca-Cola logo? No one really thinks they have something to do with Coca-Cola, right?

Probably not, but its use still amounts to trademark dilution. Under the Lanham Act (and many state statutes), dilution occurs when a famous trademark is used by a third party without the famous brand owner’s permission. The problem is not with a likelihood of confusion, but with watering down the famous brand. While consumers seeing the Coca-Cola logo used to think only of cola made by the Coca-Cola Company, consumers that have visited Sayulita now think of both the Coca-Cola Company and the Chica Locca Company. It’s an eroding of the power of Coca-Cola’s famous mark solely to stand for the company that makes Coke. It’s also an unfair free ride that Chica Locca has taken on the Coca-Cola Company’s fame.

But not to get too heavy. It’s a great find for a lawyer on vacation.

Posted on May 13, 2013 by Registered CommenterMichael Atkins in | Comments5 Comments

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Reader Comments (5)

Mexico is still another country though, right? Any idea if there's a dilution statute in Mexico?
May 14, 2013 | Unregistered CommenterRon Coleman
True, Mexico is another country, but the company trimaran's port of registry is Malibu, California.
May 14, 2013 | Unregistered CommenterKevin Halverson
Yes, Mexico does appear to have a dilution statute. (Shameless promotion: See David S. Welkowitz, Trademark Dilution: Federal, State, and International Law 2d ed. at 667 (BNA 2012).)
May 15, 2013 | Unregistered CommenterDavid Welkowitz
Plus, if they are regularly advertising to U.S. residents, it could (potentially) be considered "use in commerce" under the Lanham Act. Although that still leaves the matter of enforcing any judgment.
May 16, 2013 | Unregistered CommenterMike Matesky
Chicca Loca is catchier anyway. Coca Cola should just adopt the name.
May 17, 2013 | Unregistered CommenterBrooke

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