Famous and Well-Known Marks Committee Examines Ruling on Prior Determination of Fame

Published: March 1, 2019

Aaron M. Fennimore VIZIO, Inc. Irvine, California, USA

INTA’s Famous and Well-Known Marks Committee’s U.S. Subcommittee has discussed the value of prior fame determinations as evidence to establish fame for dilution purposes in a subsequent case, both in the United States and abroad. Below, the author discusses a recent decision by the U.S. Trademark Trial and Appeal Board on this issue. The U.S. Subcommittee plans to continue to pursue the issue in collaboration with its counterparts outside the United States during this committee term.

A trademark that is “famous” within the meaning of the Lanham Act-the primary federal trademark statute of law in the United States-is afforded a substantially broader degree of protection than non-famous brands. Not only can the fame of a mark play an outsized role in determining whether a junior mark is likely to cause confusion, but a truly famous mark (that is, one that is widely recognized by the general consuming public) can avail itself of the Act’s anti-dilution provision, which prohibits a third party from using a mark that is likely to dilute the distinctiveness of the famous mark, regardless of whether confusion, competition, or economic harm exists. See Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1367, 71‒72 (Fed. Cir. 2012), citing Section 43(c) of the Lanham Act, 15 U.S.C. § 1025(c).

Fame for dilution purposes is difficult to prove and is reserved for those few brands that have become household names. Id. at 1372. Accordingly, a brand owner may think that once a court has awarded its brand the coveted and hard-fought distinction of “fame,” then that status would automatically carry over into future proceedings. However, in some forums, a determination of fame in a prior legal proceeding cannot be used as evidence to establish fame for dilution purposes in a later case. Thus, a brand owner should be prepared for the possibility that it will have to re-prove the fame of its mark in each new case.

In 2018, the U.S. Trademark Trial and Appeal Board (TTAB) reminded owners of ostensibly famous brands that, under its rules, a prior determination of fame cannot be used to establish dilution fame in a new proceeding. Chanel, Inc. v. Camacho & Camacho, LLP, Opposition No. 91229126 (TTAB 2018) [not precedential].

Chanel opposed the registration of Camacho & Camacho’s interlocking “CC” design on the basis that it was likely to dilute the distinctiveness of Chanel’s CC Monogram mark. To prove dilution by blurring, Chanel was required to show that its mark became famous prior to 2002, the date Camacho & Camacho first began using its design. Among the evidence submitted, Chanel made of record multiple judgments and decisions from other trademark enforcement cases in which courts found or at least acknowledged that Chanel’s CC Monogram mark had become famous in the United States.

The TTAB rejected this evidence, citing its own precedent that “[t]he decision by another court based upon a different record is not evidence in this proceeding.” Id. at 12 (quoting Citigroup Inc. v. Capital City Bank Grp. Inc., 94 USPQ2d 1645, 1665‒1666 (TTAB 2010)). The TTAB further explained as follows:

We may not be bound by findings of fact made on a different record involving another party and presenting different facts. Fame is a factual matter that must be established on the record in each proceeding. Whether the record in Opposer’s previous proceedings was sufficient to establish its fame in other timeframes is not relevant to whether the record in this proceeding is sufficient to establish fame now.

Chanel, Opposition No. 91229126, at 12‒13. Fortunately for Chanel, it submitted additional evidence for the TTAB’s consideration, such as Chanel’s extensive advertising and promotional expenditures that spanned more than 90 years and led to millions of product sales and billions of dollars in revenue. The TTAB thus found the CC Monogram mark to be famous prior to 2002-notwithstanding its rejection of Chanel’s prior court successes-and ultimately concluded that trademark dilution was likely in this case.

Chanel is noteworthy for brand owners who may have hoped to use findings of fame from earlier decisions as an accelerated means of proving dilution, as well as for owners of non-famous marks that actively seek fame determinations to ease their evidentiary burden in future enforcement. Chanel makes clear that the TTAB will not consider prior decisions when evaluating fame. As a factual matter, fame is determined based on the evidence presented in each case at a given point in time, and defendants should not be bound by findings made in separate cases in which they did not have the opportunity to challenge the evidence.

This does not mean, however, that owners should be deterred from using prior fame determinations as evidence in other forums. Indeed, these determinations can still be tremendously useful.

First, district courts in the United States appear more willing to consider prior court decisions when evaluating the question of fame in the context of dilution claims. See, e.g., H-D U.S.A., LLC v. SunFrog, LLC, 311 F. Supp. 3d 1000, 1042 (E.D. Wis. 2018) (citing to “several courts and the Trademark Trial and Appeal Board [that] have previously observed that two of [the plaintiff’s] marks at issue … are famous”); adidas-Am., Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029 (D. Or. 2008) (noting that “this court has already recognized [that adidas’s three-Stripe Mark is famous] in two separate, but factually identical cases”).

Second, the ability to cite to prior fame determinations can be useful in other types of enforcement actions, such as in domain name disputes under the Uniform Domain-Name Dispute-Resolution Policy and in trademark infringement proceedings outside of the United States. Many jurisdictions such as China and Brazil will give weight to findings of fame by U.S. courts when considering the nature of infringing activities within their own borders. Moreover, listing courts that have already declared a mark famous can transform an otherwise run-of-the-mill demand letter into a much more meaningful and chilling threat.

The TTAB’s unwillingness to consider prior fame determinations as evidence in dilution cases may be disappointing for brand owners who, through extensive evidentiary showings and judicial scrutiny, have already earned the distinction of being famous. Nevertheless, these determinations still have enormous value; and owners should consider both continuing to pursue dilution claims even though they might have to re-prove fame each time, and to cite to past fame determinations when bringing those claims, particularly in forums outside of the TTAB.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

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