THE FEDERAL TRADEMARK ANTI-DILUTION ACT
HOW FAMOUS IS "FAMOUS"?
PAIGE DOLLINGER
INTRODUCTION
Since the enactment of the Federal Trademark Anti-Dilution Act ("FTDA") in 1996, how to measure a mark's
"fame" has emerged as an important and controversial issue in trademark law. Congress did not intend the FTDA to
protect trademarks unless they are "truly famous." Rather than specifically defining "famous" in the legislation,
Congress provided an eight-factor fame test that courts "may" consider in determining a mark's fame. [1]
Thus far courts have been extremely inconsistent in which of these factors they include in their analyses and in how
much emphasis they place on each. Simply put, courts have differed quite significantly in their interpretation of the
FTDA's fame requirement in part because the FTDA does not provide rigid guidelines. As one author puts it, "This
limitation has led judicial interpretation of the act to a new Wild West where courts confront the task of measuring
fame and dilution without the benefit of any criteria for making such measurements." [2] This paper argues that
continued differing judicial opinion as to a mark's fame determination will undermine the legislative intent behind
the FTDA and simultaneously curb its effectiveness. Thus, left unanswered is the question: What level of fame
must a trademark attain to be eligible for antidilution protection under the FTDA?
Part I of this paper provides the reader with background information on trademark law and introduces the concept of
trademark dilution. It discusses the goals, purposes, and history behind the FTDA and presents the FTDA's eightfactor fame test. Part II of this paper delves more deeply into the eight fame factors and provides examples of how
some courts' misuse of the factors has led to erroneous decisions. Part III of this paper examines how some courts
have misinterpreted certain aspects of the FTDA. Part IV of this paper recommends that a consistent analysis of the
element of "famousness" be followed by all of the circuits so that truly famous marks will be the only ones able to
qualify for FTDA protection.
I. Trademark Overview
Trademarks are the names, slogans, or symbols used by companies or individuals to identify and advertise their
products and services to consumers. [3] Trademarks function to ensure a consistent level of quality in the goods
and services purchased by consumers. [4]
Historically, the most frequent violation of trademark law was trademark infringement -- the unauthorized use of
another's trademark. [5] The crucial element in proving trademark infringement is the "likelihood of
confusion" [6] which measures a customer's confusion as to the source of a good. [7] Infringement focuses on
consumer protection by ensuring that customers will not be misled in purchasing goods or services due to market
confusion caused by competing marks.
Unlike traditional trademark infringement claims where a trademark holder seeks to prohibit a competitor from
using a mark to confuse customers into buying his product, dilution takes a different approach to trademark
violations. As Professor Joseph McCarthy notes, "Where the likelihood of confusion test leaves off, the dilution
theory begins." [8] When two similar or identical marks are being used simultaneously in different geographical
locations in the U.S., the courts identify the mark that was adopted and used first as the "senior mark." [9] The
mark subsequently adopted -- used second -- is the junior mark. [10] Dilution prevents such junior use of famous
trademarks even without consumer confusion as to the source of that junior use. [11] Dilution theory originated
with Frank I. Schechter, who in a 1927 Harvard Law Review article argued that even a non-competing, nonconfusing use of a unique mark would result in a "gradual whittling away or dispersion of the identity and hold upon
the public mind of the mark…" [12]
Proponents of dilution theory maintain that dilution doctrine provides a much-needed remedy for a harm
inadequately addressed by traditional trademark infringement. [13] Conversely, critics of dilution theory assert that
it comes too close to bestowing monopolistic rights to trademark owners and thereby "squarely contradicts the
fundamental tenet of trademark law that trademark rights are not property rights, but rather merely the right to
exclude others from use on similar goods." [14] One such critic, Robert Klieger, argues that giving trademark
owners a monopoly in their trademark thwarts "new competition." [15] These valid concerns become apparent
when one examines how some courts have interpreted the language of the FTDA. Some circuit courts read
unrestrained dilution theory into the FTDA. This results in greater risks to new business owners attempting to select
a trademark, while senior mark users gain omnipotent-like power with which to defeat new non-infringing uses.
A. TYPES OF DILUTION
Dilution, as defined by the FTDA, means "the lessening of the capacity of a famous mark to identify and distinguish
goods or services, regardless of the presence or absence of competition between the famous mark and others, or a
likelihood of confusion, mistake, or deception. [16]
It is important to distinguish between the two types of dilution -- tarnishment and blurring. Tarnishment occurs
when a defendant uses a famous mark in association with unwholesome or defective goods or
services. [17] Tarnishment diminishes the goodwill and reputation of the famous mark, particularly when the
unauthorized use involves illegal drugs, pornography or sexual crudity. [18] For example, if an X-rated movie
portrays actresses in Chicago Bears' cheerleading uniforms, the Bears' reputation is effectively tarnished. The Toys
"R" Us, Inc. court had no trouble finding that "Adults R Us" in an Internet site tarnished and thereby diluted "Toys
'R' Us" and "Kids 'R' Us" when used to sell sexual products. [19] Tarnishment can also occur when a person
attempts to parody a famous trademark in a derogatory fashion. [20]
In contrast, blurring occurs when the use of a similar mark on unrelated goods weakens the distinctive link between
the mark and the trademark holder's goods, even though a consumer may not be confused as to the source of the
goods. For instance, a legal pad manufacturer using a mark similar to "TOYOTA" on its products would serve to
diminish the mental association made between "TOYOTA" and the line of goods it is normally associated with -cars. Therefore, the strength of "TOYOTA's" mark is weakened because the public now associates the mark with a
new and different source. Because of its subtlety, dilution by blurring can prove difficult for some courts to
recognize. In describing such subtlety the Eighth Circuit likened injury by blurring to a "death by a thousand
cuts." [21]
Additionally, dilution can result from conduct that neither meets the definition of tarnishment nor
blurring. Recently, courts have applied the FTDA to cases involving "cybersquatting" on the Internet. [22] In these
cases, defendants use domain names similar to plaintiffs' marks with the intent to sell the domain name back to the
trademark owner for a high fee. [23] In such a situation, dilution has occurred because Internet users seeking
plaintiffs' goods or services who mistakenly come across defendants' website might give up searching for plaintiffs'
actual website due to their frustration over having to wade through too many web sites to find plaintiffs'. [24]
Congress recently enacted the Anticybersquatting Consumer Protection Act ("ACPA") to supplement the FTDA in
prohibiting cybersquatting because the FTDA's fame requirement made it less useful to trademark owners wanting
to establish and maintain their presence on the Internet. [25] The ACPA requires a plaintiff to show that the
defendant acted in bad faith, thus protecting innocent registrants who either unintentionally registered a trademark or
had no intent to profit from the goodwill of the mark. [26]
B. History and Purposes of the FTDA
Prior to the enactment of the FTDA, claims of dilution were recognized only under state statutes. In 1947,
Massachusetts became the first state to adopt an anti-dilution statute, [27] but the majority of states did not enact
anti-dilution legislation until after 1963. [28] To date, thirty-four states have anti-dilution statutes. [29]
At least two problems were created as more and more states began enacting anti-dilution statutes. First, injunctions
issued in one state were difficult to enforce in states lacking anti-dilution statutes. [30]
Second, the differences
between the state statutes gave trademark owners the incentive to forum shop. [31] Judges became reluctant to
issue nationwide injunctions based on state anti-dilution laws not knowing whether those injunctions would be
enforced in jurisdictions that did not recognize dilution claims. [32] Trademark owners with multi-state markets
became increasingly concerned about the lack of nationwide relief. However, these same trademark owners also
realized that trying to obtain injunctive relief in all fifty states would most likely be impossible. These problems led
to the adoption of the FTDA in 1996. [33]
Congress enacted the FTDA to meet three needs. First, Congress thought the FTDA would bring about uniformity
between the states' antidilution statutes. [34] Second, Congress hoped the FTDA would enhance America's position
in international trade relations. [35] Finally, by enacting the FTDA, Congress hoped to encourage trademark
owners to invest in their marks thereby achieving famous mark status, and to recognize the investments that mark
holders have made in making their marks famous. [36]
The FTDA codifies dilution theory. The Act provides that the owner of a "distinctive and famous" mark shall be
entitled to an injunction against another's commercial use of a mark or trade name if such use begins after the mark
has become famous, and if it dilutes the distinctive quality of the mark. [37]
As Senator Orrin Hatch, one of the
sponsors of the FTDA, pointed out, "[T]his bill is designed to protect famous trademarks from subsequent uses that
blur the distinctiveness of the mark or tarnish or disparage it, even in the absence of likelihood of
confusion." [38] An injunction is a trademark owner's only protection under the Act unless the defendant acts
willfully in causing dilution. Only if willful intention is present does the Act provide for damages, lost profits, and
attorneys fees. [39]
The FTDA was signed into law by President Clinton on January 16, 1996 -- fifty years after the enactment of the
first state anti-dilution statute. [40] The FTDA effectively amended the Lanham Act of 1946 by providing the
owner of a famous trademark injunctive relief against unauthorized use of a mark that dilutes that distinctive quality
of the famous mark. [41] Specifically, the Act added the following subsection to section 43 of the Lanham Act:
The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court
deems reasonable, to an injunction against another person's commercial use in commerce of a mark or trade name, if
such use begins after the mark has become famous and causes dilution of the distinctive quality of the [famous]
mark… [42]
Thus, the "threshold" issue to be determined in a dilution claim brought under the FTDA is whether the mark is
famous. [43]
II. Famousness
This section thoroughly analyzes each of the eight fame factors
by examining the congressional intent behind the factors and
providing examples of how some courts have failed to adhere to
Congress' intent when conducting a fame analysis.
The FTDA provides eight non-exclusive factors that courts may consider in determining a mark's famousness. They
are:
(A) the degree of inherent or acquired distinctiveness of the
mark;
(B) the duration and extent of use of the mark in connection with
the goods or services with which the mark is used;
(C) the duration and extent of advertising and publicity of the
mark;
(D) the geographical extent of the trading area in which the mark
is used;
(E) the channels of trade for the goods or services with which
the mark is used;
(F) the degree of recognition of the mark in the trading areas
and channels of trade used by the marks' owner and the person
against whom the injunction is sought;
(G) the nature and extent of use of the same or similar marks by
third parties; and
(H) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the
principal register. [44]
A. The Degree of Inherent or Acquired Distinctiveness of the Mark
Before it can be considered "diluted," a mark must have a high degree of distinctiveness. [45] Distinctiveness -- not
fame -- was the requisite factor for protection under most state dilution statutes. [46] In enacting the FTDA,
however, Congress intended to make fame the necessary showing for a mark to be entitled to
protection. [47] Therefore, a trademark owner claiming dilution under the federal Act must show more than mere
distinctiveness.
B. The Duration and Extent of Use of the Mark in Connection with
the Goods or Services with which the Mark is Used
This fame factor, like many of the others, is written in general terms. The statute does not specify a minimum as to
the length of time a mark must be used before it can be considered famous. Both the House and TRC Reports note
that famous marks "will have been in use for some time." [48] The fact that some courts have considered marks as
old as 125 years [49] and as young as 15 years [50] to be famous demonstrates the potential for inconsistent judicial
findings as to this factor. Not surprisingly, the TRC Report pointed out that some trademarks will become famous
overnight as a result of heavy publicity and advertising. [51]
Trademark owners will not be able to gauge whether their marks may be eligible for dilution protection under
this factor if similar periods of use lead to different determinations of fame. Similarly, their attorneys will have
difficulty advising their clients as to this factor because of the inconsistent judicial findings thus far. In fact, the
TRC Report pointed out that some trademarks will become famous overnight as a result of heavy publicity and
advertising. [52]
The Wawa Court erroneously used the duration of use factor to bolster its decision granting plaintiff an
injunction. In that case the plaintiff had been using is mark for almost ninety years. [53] However, although Wawa
owned over 500 convenience stores in five states and had an annual advertising budget of over six million
dollars [54] , its marks did not possess the nationwide fame necessary for FTDA protection. [55] In its fame
analysis, the Wawa court should have placed less emphasis on the duration of use factor and instead should have
weighed the "geographical extent of the trading area in which the mark is used factor" more heavily. If it had done
so, it would have appropriately denied plaintiff protection from dilution under the FTDA.
C. The Duration and Extent of Advertising and Publicity of the
Mark
This factor is important in that it demonstrates Congress' recognition of the "substantial investment" that famous
mark owners undertake in publicizing their marks. [56] Congress intended to reward mark owners that have
invested heavily in promoting their unique identifiers by enjoining others who attempt to profit on the good name
established by the famous mark.
Similar to the duration of use factor discussed above, the duration of promotion factor also carries the potential of
misuse because it involves making an objective finding. Therefore, although it should be considered in a fame
determination, this factor should not be weighed heavily by a court in its analysis.
D. The Geographical Extent of the Trading Area in which the Mark
is Used
This fourth fame factor is one of the most essential as evidenced by the House Report's reiteration of the fact that the
FTDA is intended to cover only marks that are famous on a nationwide basis. [57] Importantly, the House Report
also points out that the FTDA does not pre-empt state statutes and that "(s)tate laws could continue to be applied in
cases involving locally famous or distinctive marks." [58]
Because this "geographical extent of use" factor is also stated in vague terms, some courts have granted relief in
cases where Congress would have intended state laws to be the sole remedy. [59]
E. The Channels of Trade for the Goods or Services with which the
Mark is Used
This factor measures how widespread a mark's use is. The more widespread the mark's use, the easier it will be for a
court to infer that the mark is famous. A court may find that the mark is used in channels of trade likely to make it
known to a broad section of the public. Such a finding would do away with the need for the plaintiff to rely on
survey evidence to prove the famousness of its mark due to its recognition by a substantial number of people
nationwide.[60] The greater the number of channels in which the marks I used, the more likely that the mark will
be considered well known, famous and eligible for dilution protection.
At least two courts have given this factor great weight in rendering a fame determination. First, in Panavision Int'l,
L.P. v. Toeppen, the fact that Panavision directed its advertising to the general public along with companies in the
entertainment industry helped persuade the court that Panavision's mark was indeed famous. [61] Second,
American Express' use of its highly recognizable "Don't Leave Home Without It" Mark in the fields of travel, charge
services, traveler's checks, tours and reservations also aided a determination that the mark was famous. [62]
F. The Degree of Recognition of the Mark in the Trading Areas and
Channels of Trade Used by the Mark's Owner and the Person
Against Whom the Injunction is Sought
Whether or not this factor relates to fame is questionable. It seems to be more of an indicator that dilution is likely
to occur than it is an indicator of fame. To analyze this factor, the court must examine the channels of trade for both
the senior and junior users' marks. Then the court must determine whether the senior mark is well recognized
enough in both markets such that junior use could lead those in its market to associate its goods with the goods of
the senior user. [63]
G. The Nature and Extent of Use of the Same or Similar Marks by
Third Parties
This factor requires a court to determine the exclusivity of the senior mark. [64] A mark's exclusivity facilitates a
fame determination because it is indicative of the distinctiveness of the mark. [65]
The court's decision in Gazette Newspapers, Inc. v. New Paper, Inc. [66] exemplifies an erroneous dismissal of the
fact that third parties used the "Gazette" name extensively. In that case, the court applied the FTDA to protect the
use of "Gazette" in only two counties in Maryland. [67] The court failed to recognize, however, that there are at
least seven major newspapers around the country that use "Gazette" in their titles. [68] The FTDA provides an
extraordinary remedy to trademark owners, thereby creating a broad zone of exclusivity around famous
marks. [69] Thus, the Gazette court's decision plainly contradicts congressional intent by granting such an
extraordinary remedy to a mark containing such an ordinary and widely used name.
It is essential that courts thoroughly analyze this seventh factor in determining a mark's fame because Congress
intended the FTDA to protect only those marks that are "unique, singular, or particular." [70]
H. Whether the Mark is Federally Registered
This, the final of the eight fame factors, should also be the factor on which courts place the least amount of
weight. This factor used to be a requirement under the proposed statute rather than a suggested factor. [71] The
purpose of limiting dilution protection to registered marks was threefold in that it promoted predictability [72] ,
established prima facie evidence of distinctiveness [73] , and promoted registration of trademarks. [74] After
introduction to the House, however, the FTDA was amended to include protection for famous unregistered marks so
as to fulfill international obligations under the Trade Related Intellectual Property portion of the General Agreement
on Tariffs and Trade.[75]
As stated earlier, registration was required to show that a mark was distinctive. [76] Fame, however, was to be
proved separately. [77] When it created the statute, the Trademark Review Commission (TRC) understood that
famous marks comprised a small subset of all registered marks. [78] Actually, the fact that a mark is registered has
little relation to whether it has the degree of distinctiveness necessary to qualify as famous. [79]
III. How some courts have misinterpreted the FTDA
Before assigning all of the blame for the problems that have arisen with enforcement of the FTDA to the courts, it is
critical to note that there are inherent problems in the Act itself -- namely problems related to ambiguity. There are
at least four ways in which the FTDA is ambiguous. First, and probably most importantly, the Act does not define
the term famous. [80] Second, the FTDA does not spell out a method by which to analyze trademark fame -- it
simply tells courts they may consider the listed eight factors. Third, the FTDA indecisively uses the term
"distinctiveness" throughout the statute without clarifying its definition. This leads to many questions. Is distinctive
intended to be synonymous with fame? Does a court need to undertake an independent inquiry for distinctiveness in
addition to a fame analysis? What are the characteristics a mark must possess in order to be distinctive or
famous? Can a mark be distinctive but not famous? Is a famous mark automatically a distinctive mark? Finally,
the eight fame factors themselves can be interpreted in a variety of ways, and the Act gives no indication as to which
possible means of interpretation may be the best.
Thus, although judges need to undertake a more comprehensive analysis of the eight fame factors, their errors in
interpretation are facilitated by the ambiguity inherent in the Act. The FTDA's use of non-exclusive factors in the
determination of a mark's fame makes it difficult to predict whether any particular mark will be deemed
famous. Three examples of truly famous diluting marks are: "DUPONT shoes, BUICK aspirin, and KODAK
pianos." [81] Other marks that, not surprisingly, have also reached the level of "famous marks" include
BUDWEISER beer, [82] POLO clothing, [83] TOYS 'R US retail toy sales [84] and HOTMAIL e-mail
service. [85] Conversely, trademarks such as BONGO, WEATHER GUARD, and GOLDEN BEAR, have been
denied protection under the FTDA because they do not equal the level of fame of KODAK, DUPONT, and
BUICK. [86]
There are at least five ways various courts have erred in interpreting the FTDA. These include: (1) Confusing
infringement's secondary meaning test with the test for fame, (2) Using the wrong definition of fame, (3) Failing to
analyze each of the eight fame factors, (4) Finding dilution of niche market trademarks, and (5) Conducting a
separate analysis of distinctiveness.
1. Secondary Meaning
Since the FTDA does not force courts to limit themselves to the eight listed factors in a determination of fame
analysis, some courts have erroneously concluded a mark is famous based on the "secondary meaning" test
necessary to prove trademark infringement. The tests for fame and secondary meaning mirror each other to a certain
extent because they both include factors such as the degree of third party use, the extent of advertising, the consumer
base of the mark, and the length of the mark's usage. [87]
Some courts of appeals have explicitly rejected such an approach. For example, the First Circuit, in I.P.
Lund [88] criticized the method of linking a finding of secondary meaning distinctiveness to a finding of fame for
dilution purposes. [89] Additionally, in Avery Dennison Corp. [90] , the Ninth Circuit observed that "likelihood of
confusion should not be considered" in analyzing a claim brought under the FTDA. [91]
The First and Ninth Circuits were correct in refusing to link the FTDA's fame analysis to the secondary meaning
test inherent in trademark infringement analysis. The purpose of the FTDA is to protect the distinctiveness of
famous marks from being diminished when others use the mark on other products. [92] Conversely, the purpose of
infringement is to protect against consumer confusion. [93] The FTDA is explicit in stating that a dilution claim is
independent of an infringement claim, and states that dilution can occur in the "presence or absence" of a likelihood
of confusion. [94]
2. Courts use the wrong meaning of fame
The First Circuit in I.P. Lund Trading, [95] and the Ninth Circuit in Avery Dennison Corp. v. Sumpton, [96] by
requiring plaintiffs to own unusually strong marks before qualifying for FTDA protection, have strictly interpreted
the FTDA's fame requirement. [97] The First Circuit has given the term "famous" a highly restrictive, legalistic
meaning, viewing it as a "term of art given (a) specific rigorous meaning by the FTDA." [98] Trademark owners
bringing dilution claims under the FTDA in circuits such as the First and Ninth have a much lesser chance of
success because of the rigorous and strict way in which these circuits interpret the fame element.
Conversely, courts such as the Second Circuit in Nabisco, Inc. v. P.F. Brands, Inc., [99] and the Seventh Circuit
in Syndicate Sales, Inc. v. Hampshire Paper Corp., [100] have interpreted the fame element much more loosely, and
thus are more likely to apply the FTDA's protection to marks of lesser celebrity. In direct contrast to the First
Circuit, the Second Circuit reads the FTDA as using the term "famous" "in (its) ordinary English language
sense." [101] Therefore, in jurisdictions such as these, trademark owners may have an easier time proving fame.
3. Mandatory Analysis of Each Factor
Some courts have deemed a mark famous only after
undertaking a comprehensive balancing of the eight FTDA fame factors. These courts are adhering to the FTDA's
recommendation that courts consider all of the eight factors in a fame analysis. [102] Two circuits -- the
Seventh [103]and the Ninth [104] -- appear to be doing just that.
In Syndicate Sales, Inc. v. Hampshire Paper Corp., the lower court determined that the plaintiff did not meet the
FTDA's fame requirement because the plaintiff's mark, a plastic basket used for flowers at funerals, was strong only
among "wholesalers and retail florists." [105] The Seventh Circuit disagreed with the lower court, directing that
"the narrowness of the market in which a plaintiff's mark has fame is a factor that must be considered in the
balance." [106] The Seventh Circuit then remanded the fame issue back to the lower court, observing that "[c]learly
the court did not consider, in this (niche market) context, all of the factors set forth in the statute." [107]
The Ninth Circuit, in Avery Dennison, [108] never expressly stated that courts should examine all eight factors,
but that is exactly what it did in practice. [109] In Avery Dennison, the lower court found that the plaintiff's marks
were famous in spite of evidence pertaining to the plaintiff's marketing efforts and consumer association with the
plaintiff's marks. [110] The Ninth Circuit focused on the importance of the fame determination in preserving
trademark protection, and stated that antidilution protection is "the most potent form of trademark protection," that
should be applied to only a limited class of "truly prominent and renowned" marks. [111] After analyzing each
factor, the Ninth Circuit decided that the plaintiff had failed to meet its burden of proving that its marks were
famous. [112]
The Seventh and Ninth Circuit's method of analyzing every FTDA fame factor is the preferable means of
determining fame because it is the only one that gives force to the FTDA's eight factors. [113] However because of
the differing consensus among the circuit appellate courts thus far, the "short-cuts" of (1) inferring fame from
components of infringement analysis, or (2) defining fame according to its ordinary meaning are still acceptable
ways for courts to deem a mark famous.
4. Niche Market Fame
Another issue regarding fame that courts have increasingly faced is whether a mark can be deemed famous
within a particular market segment or niche. Most courts have accepted the proposition that the FTDA can be
applied to prevent dilution within a particular market niche and that "fame" does not require fame to all
consumers. One of the leading cases discussing niche market fame is Times Mirror Magazines, Inc. v. Las Vegas
Sports News, L.L.C. [114]
In Times Mirror Magazines, Inc., plaintiff, publisher of "The Sporting News," provided its readers with information
on many sports but specifically excluded mention of gambling, believing "that there is a portion of the population
that is adamantly opposed to gambling and that they would not look favorably on any of [its] products if they
thought [the magazine was] promoting gambling in any way." [115] Defendant began publishing the "Las Vegas
Sporting News" -- a magazine containing articles, editorials and advertisements on sports wagering "for the sports
gaming enthusiasts or individuals that like to take a risk." [116]
The Third Circuit wrongly affirmed the lower court's decision issuing a preliminary injunction against defendant
upon finding that "The Sporting News" was indeed a famous mark. [117] Judge Barry's dissent in Times Mirror, is
the more correct interpretation of the FTDA because her reasoning follows the legislative intent behind the
Act. Judge Barry emphasized, "The legislative history of the Act is crystal clear that Congress intended courts to be
highly selective in determining which marks are famous and accorded those truly famous marks an unprecedented
degree of protection." [118]
The dissent also points out that nowhere in the legislative history is a "niche-market"
theory of fame mentioned. [119] Perhaps the most persuasive part of the dissent comes when it exposes the
fundamental problem with application of the niche market theory:
"Courts approving the "big fish in a small pond" theory of trademark dilution fail to recognize that it threatens to
overrun trademark infringement law. Trademark infringement law permits similar, or even identical, marks to
coexist on non- competing goods. If even a locally famous mark can preclude all
other marks in every channel of trade, then conceivably every trademark can be used to create a monopoly in a word
or symbol -- a proposition clearly contrary to the intent and practice of trademark law. It is possible to find virtually
any mark to be "famous" within some market, depending on how narrowly that market is defined." [120]
Thus, the dissent concludes that because both parties were operating within the narrow market of sports periodicals,
the plaintiff's complaint in Times Mirror simply represents a "garden variety infringement case" and that
accordingly, trademark infringement law -- not the FTDA -- should be applied to provide an appropriate
remedy. [121]
5. Separate Analysis of Distinctiveness is Unnecessary
The FTDA recommends courts consider its eight factors to determine "whether a mark is distinctive and
famous." [122] The circuits disagree as to whether a showing of fame alone is sufficient to entitle an owner to
relief under the FTDA. Most circuits grant trademark owners anti-dilution protection under the FTDA if four
elements are met:
(1)
The mark must be "famous."
(2) The defendant must be making a commercial use of the mark
in interstate commerce.
(3) The defendant's use of the mark must have begun after the
plaintiff's mark became famous.
(4)
The defendant's use of the mark must cause dilution by lessening the capacity of the plaintiff's mark to
identify and distinguish goods or services. [123]
The circuits applying the four-element test for dilution are in agreement with Professor Joseph McCarthy, who has
argued that the second "distinctive" is redundant and merely a synonym for fame. [124]
The Second Circuit, however, adds a fifth element to the above-mentioned four, and in doing so explicitly rejects
McCarthy's view. According to the Second Circuit, courts must also consider whether the mark is
"distinctive." The Second Circuit, in Nabisco, Inc. v. PF Brands, Inc., [125] emphasized that "[d]istinctiveness in a
mark is a characteristic quite different from fame," and further concluded that "(i)t is quite clear that the (FTDA)
intends distinctiveness, in addition to fame, as an essential element." [126] The Second Circuit points out that many
marks can be labeled famous but are of the "common or quality-claiming or prominence-claiming type -- such
as American, National, Federal, Federated, First, United Acme Merit or Ace," [127] and thus concludes that while
these marks are famous, they are "not at all distinctive." [128]
IV.
RECOMMENDATIONS
In order to protect owners of truly famous marks and simultaneously prevent granting injunctions to trademark
owners whose marks do not meet the FTDA's fame requirement, it is imperative that courts engage in a
comprehensive analysis of the fame factors. In doing so, courts should be mindful of Congress' intent to limit
protection to a small group of marks that are "unique, singular," marks that are potent, marks in which the owner has
made a "substantial investment . . . in the mark," and marks which carry an "aura." [129]
A. Judges should analyze all of the fame factors and explain the
weight they accord to each
Judges that analyze only some of the fame factors mistakenly ignore trademark owners who successfully satisfy the
majority of the factors. The FTDA does not instruct the courts to focus more on some factors or less on others, but it
presents a balancing test that courts should undertake on a case-by-case basis. [130]
B. Delete Federal Registration as a Fame Factor
Federal registration of a mark should be deleted from the FTDA as a fame factor. Registration may be considered as
prima facie evidence that the mark is distinctive, but plaintiffs should not be punished if their mark is not
registered. Although a mark's registration establishes a mark's distinctiveness (the first factor in the fame analysis),
its inclusion as the eighth fame factor is misleading and probably confuses courts more than it assists them.
C. Judges should not conduct a separate analysis of
distinctiveness
A separate analysis of distinctiveness, as was undertaken by the Nabisco court, should not be conducted. A separate
analysis would place undue importance on distinctiveness and create redundancy while ignoring the mandates of the
FTDA. Distinctiveness is simply one of eight factors to consider in determining fame. [131] By analyzing
"distinctiveness" alone and failing to complete a comprehensive fame analysis, the Nabisco court misconstrued the
plain language of the FTDA.
The language of the FTDA makes it clear that all famous marks are distinctive, whether they became distinctive
over time or whether such marks are inherently distinctive, and that conversely, not all distinctive marks are
famous. [132] The Act states that protection is extended only to the "owner of a famous mark" -- not the owner of a
famous and distinctive mark. [133] Indeed, a truly famous mark, worthy of anti-dilution protection is inherently
distinctive. [134]
D. Emphasize quantitative survey evidence
Courts have had difficulty determining what definition of fame Congress intended the FTDA to take on. As we saw
earlier, the Second Circuit in Nabisco interpreted "fame" as it is used in its ordinary English language
sense. Conversely, the First Circuit, in I.P. Lund, assigned "fame" a highly restrictive and legalistic meaning. A
better interpretation of the phrase "fame in its ordinary English language sense" is that a mark is not famous unless
survey evidence demonstrates that a substantial percentage of the general public recognizes the mark as famous. It
seems no one would be in a better position to determine fame than a cross-section of the general public.
Utilizing such a quantitative survey method would help limit the FTDA's protection to truly renowned marks -marks so inherently famous that a high percentage of the general public would recognize them. At the same time,
such a method would prevent a mark recognized only by a narrow segment of society (e.g. niche-market fame) from
qualifying for the FTDA's protection.
V.
CONCLUSION
Courts' adherence to the FTDA's fame requirement is
critical to lessening the risk of trademark overprotection that dilution presents. Congress took steps to ensure that
the extraordinary remedy of dilution would be limited to truly famous marks by providing a list of eight factors
courts may weigh in determining whether a particular mark is famous. [135] Unfortunately, courts have been
pressured to lower the bar as to what constitutes a famous mark. This has led to what one commentator has termed
"doctrinal creep" [136] -- a phenomenon that occurs when a remedy exclusively developed for an extraordinary case
becomes increasingly applied to the ordinary case.
There are many incentives for trademark owners to assert that their marks are famous. These incentives include the
prospect of obtaining near property right status, avoidance of having to prove confusion, and obtaining a cause of
action to "back up" a trademark infringement claim. To ensure dilution does not swallow up all trademark law,
courts must remain vigilant and consistent by rigorously applying the FTDA's fame requirement, permitting only
truly famous marks to qualify for the "extraordinary" remedy of dilution. Otherwise, as one commentator observes,
"It may just be a matter of time before dilution eclipses confusion as the gravamen of most federal trademark actions
and trademark rights in gross displace consumer protection as the defining feature of United States Trademark
law." [137]
[1] Lanham Act § 43(c)(1), 15 U.S.C.A. 1125(c)(1).
[2] See Xuan-Thao N. Nguyen, The New Wild West: Measuring and Proving Fame and Dilution Under the Federal
Trademark Dilution Act, 63 Alb. L. Rev. 201 (1999).
[3] See 15 U.S.C. § 1127 (1994) ("The term 'trademark' includes any word, name, symbol, or device, or any
combination thereof… [used] to identify and distinguish his or her goods… from those manufactured or sold by
others and to indicate the source of the goods…").
[4] See 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 2:3, at 2-3 (4th ed. Dec. 1999).
[5] See Black's Law Dictionary 781 (6th ed. 1990).
[6] See 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 23:1, at 23-6 (4th ed. Dec.
1999).
[7] See id. 23:5, at 23-15.
[8] See 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 24:1, at 24-6. (4th ed. 1996).
[9] See 4 J. Thomas McCarthy, supra note 8, §§ 24:92-24:92.2.
[10] See id.
[11] See id. at §24:70, at 24-121.
[12] Frank I. Schechter, The Rational Basis of Trademark Protection, 40 Harv. L. Rev. 813, 829 (1927).
[13] Beverly W. Pattishall, Dawning Acceptance of the Dilution Rationale for Trademark-Trade Identity Protection,
74 Trademark Rep. 289, 290 (1984).
[14] Courtland L. Reichman, State and Federal Trademark Dilution, 17 Franchise L.J. 111, 113 (Supp. IV 1998).
[15] Robert N. Klieger, Trademark Dilution: The Whittling Away of the Rational Basis for Trademark Protection,
58 U. Pitt. L. Rev. 789, 862-63 (1997) (stating that dilution theory "enhances the barriers to new competition in
related and unrelated markets' because it "prevents … junior uses of an identical or similar mark in related or
unrelated industries even where deception is not likely to result").
[16] See Eric A. Prager, The Federal Trademark Dilution Act of 1995: Substantial Likelihood of Confusion, 7
Fordham Intell. Prop. Media & Ent. L.J. 121, 121 (1996).
[17] Hormel Foods Corp. V. Jim Henson Prods., Inc., 73 F.3d 497, 507-08 (2d. Cir. 1996).
[18] See Edgar Rice Burroughs, Inc. v. Manns Theatres, 195 USPQ 159, 161 (C.D. Cal. 1976) (showing how the use
of the TARZAN character in X-rated film would dilute the value of its famous mark).
[19] See Toys 'R' Us, Inc. v. Akkaoui, 40 USPQ 2d 1836, 1836-39 (N.D. Cal. 1996); see also Polo Ralph Lauren
L.P. v. Schuman, 46 USPQ 2d 1046, 1048 (S.D. Texas 1998) (granting permanent injunction prohibiting the
tarnishing use of 'The Polo Club' and 'Polo Executive Retreat' for an adult entertainment establishment).
[20] 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 24:69, at 24-120 (stating that
dilution by tarnishment exists, "(f)or example, (when) the mark … (is) used by the defendant without permission in
an attempted parody context that is totally dissonant with the image projected by the mark."
[21] Coca-Cola Co. v. Stewart, 621 F.2d 287, 292 (8th Cir. 1980).
[22] See Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316, 1326 (9th Cir. 1998); see also TeleTech Customer Care
Management, Inc. v. TeleTech Co., Inc., 977 F. Supp. 1407, 1413 (C.D. Cal. 1997).
[23] See Panavision Int'l, 141 F.3d at 1319; see also TeleTech Customer Care Management, 977 F. Supp. at 140910.
[24] See Panavision Int'l, 141 F.3d at 1327 (instructing dilution occurs when "potential customers of [plaintiff are]
discouraged if they cannot find its webpage by typing in 'Panavision.com'").
[25] Pub. L. No. 106-113 (1999) (codified at 15 U.S.C. § 1125(d) (1999)).
[26] See 15 U.S.C. § 1125(d)(1)(B) (1999).
[27] Kenneth L. Port, The "Unnatural" Expansion of Trademark Rights: Is a Federal Dilution Statute Necessary?,
18 Seton Hall Legis. J. 433, 438 (1994).
[28] See Laura M. Slenzak, Dilution Law: At a Crossroad? Dilution Law in the United States and Canada: A
Review of the State of the Law and a Proposal for the United States Federal Dilution Protection, 83 Trademark Rep.
205, 209 (1993).
[29] See Ala. Code § 8-12-17 (1993); Alaska Stat. § 45.50.180 (Michie 1999); Ariz. Rev. Stat. § 44-1448.01 (1994);
Ark. Code Ann. § 4-71-113 (Michie 1996); Cal. Bus. & Prof. Code § 14330(a) (West 1987); Conn. Gen. Stat. § 3511I(c) (1999); Del. Code Ann. Tit. 6, § 3313 (1999); Fla. Stat. ch. 495.151 (1997); Ga. Code Ann. §10-1-451(b)
(Harrison 1998); Idaho Code § 48-513 (1997); 765 Ill. Comp. Stat. 1035/15 (West 1993); Iowa Code § 548.113
(1997); 1999 Kan. Stat. Ann. § 85 (1999); La. Rev. Stat. Ann. § 51:223.1 (West 1997); Me. Rev. Stat. Ann. Tit. 10 §
1530 (West 1997); Mass. Gen. Laws ch. 110B, § 12 (West 1999); Minn. Stat. § 325D.165 (West 1995); Miss. Code
Ann. § 75-25-25 (1999); Mo. Rev. Stat. § 417.061 (1990); Mont. Code Ann. § 30-13-334 (1999); Neb. Rev. Stat. §
87-122 (1994); N.H. Rev. Stat. Ann. § 350-A-12 (1995); N.J. Stat. Ann. § 56:3-13.20 (West Supp. 1999); N.M. Stat.
Ann. § 57-3-10 (Michie 1995); N.Y. Gen. Bus. Law § 360-1 (McKinney Supp. 1999); Or. Rev. Stat. § 647.107
(1988); 54 Pa. Cons. Stat. Ann. § 1124 (West Supp. 1999); R.I. Gen. Laws § 6-2-12 (1992); S.C. Code Ann. § 3915-1165 (Law Co-op. Supp. 1999); Tenn. Code Ann. § 47-25-512 (1995); Tex. Bus. & Com. Code Ann. § 16.29
(West Supp. 1999); Wash. Rev. code § 19.77.160 (1999); W. Va. Code § 47-2-134 (1999); Wyo. Stat. Ann. § 40-1115 (Michie 1999).
[30] See David S. Welkowitz, Preemption, Extraterritoriality, and the Problem of State Antidilution Laws, 67 Tul. L.
Rev. 1 (1992).
[31] See 4 J. Thomas McCarthy, supra note 8, § 24:75.
[32] See id. at 3-4, reprinted in 1995 U.S.C.C.A.N. at 1030-31.
[33] See Christopher R. Perry, Trademarks as Commodities: The "Famous" Roadblock to Applying Trademark
Dilution Law in Cyberspace, 32 Conn. L. Rev. 1127, 1131 (2000).
[34] H.R. Rep. No. 104-374, at 3 (1995), reprinted in 1995 U.S.C.C.A.N. 1029, 1030.
[35] H.R. Rep. No. 104-374, at 4 (1995), reprinted in 1995 U.S.C.C.A.N. 1029, 1031.
[36] H.R. Rep. No. 104-374, at 3, reprinted in 1995 U.S.C.C.A.N. 1029, 1030.
[37] 15 U.S.C.A. § 1125(c)(1) (West 1998).
[38] 141 Cong. Rec. § 19306, §19310 (daily ed.. Dec. 29, 1995).
[39] 15 U.S.C.A. § 1125(c)(2) (West 1998).
[40] See Lynda J. Oswald, "Tarnishment and "Blurring" Under the Federal Trademark Dilution Act of 1996, 36 Am.
Bus. L.J. 255, 264 (1999);
[41] 15 U.S.C. § 1125(a)(1) (1994).
[42] 15 U.S.C. § 1125(c) (1994).
[43] 15 U.S.C. § 1125(c)(1) (1994).
[44] Lanham Act § 43(c)(1), 15 U.S.C.A. 1125(c)(1).
[45] See Restatement (Third) of Unfair Competition § 25, cmt. E (1995).
[46] United States Trademark Association Model State Trademark Bill § 12, reprinted in J. Thomas McCarthy,
McCarthy on Trademarks § 24:80 (4th ed. 1995).
[47] See 15 U.S.C. § 1125(c)(1) (1994 & Supp. II 1996).
[48] See H.R. Rep. No. 104-374, at 7 (1995), reprinted in 1995 U.S.C.C.A.N. 1029, 1034; The United States
Trademark Association Trademark Review Commission Report and Recommendations to USTA President and
Board of Directors (hereinafter TRC Report), 77 Trademark Rep. 375, 460 (1987).
[49] See Ringling Bros.-Barnum & Bailey Combines Shows, Inc. v. Utah Div. Of Travel Dev., 955 F. Supp. 605,
609 (E.D. Va. 1997). Ringling Bros. has used the trademark "The Greatest Show on Earth" since 1872.
[50] See Teletech Customer Care Management (Cal.), Inc. v. Tele-Tech. Co., 977 F. Supp. 1407, 1408 (C.D. Cal.
1997).
[51] See TRC Report, supra note 48, at 460.
[52] See id. at 460.
[53] See Wawa Inc. v. Haaf, 40 U.S.P.Q. 2d 1629, 1631 (E.D. Pa. 1996).
[54] See id. at 1631.
[56] See H.R. Rep. No. 104-374, at 3, reprinted in 1995 U.S.C.C.A.N. 1029, 1030.
[57] See H.R. Rep. No. 104-374, at 7 reprinted in 1995 U.S.C.C.A.N. 1029, 1030, 1031, 1034.
[58] See id. at 4.
[59] See Gazette Newspapers, Inc. v. New Paper, Inc., 934 F. Supp. 688, 691 & n.3 (D. Md. 1996); see also Wawa
Inc. v. Haaf, 40 U.S.P.Q. 2d 1629, 1631 (E.D. Pa. 1996).
[60] See Dominic Bencivenga, Trademark Dilution: Attorneys Long for Guidance on Proving Erosion, N.Y.L.J.,
Apr. 3, 1997, at 5.
[61] See 945 F. Supp. 1296, 1303 (C.D. Cal. 1996), aff'd 141 F.3d 1316 (9 th Cir. 1998).
[62] See American Express Co. v. CFK, Inc., 947 F. Supp. 310, 315 (E.D. Mich. 1996).
[63] See TRC Report, supra note 48, at 460-61.
[64] 15 U.S.C § 1125(c)(1)(G) (1994 & Supp. II 1996).
[65] See Restatement (Third) of Unfair Competition § 25 cmt. E at 268 (1995). If the mark is exclusive, it is more
likely to retain its significance as a source indicator outside the context of is market and thus indicate fame. If others
use the same mark in other contexts, the mark is less likely to retain such significance.
[66] See 934 F. Supp. 688, 690 (D. Md. 1996).
[67] See id. at 695.
[68] See Lexis Directory of Services at 189-91 (1997).
[69] See J. Thomas McCarthy, McCarthy on Trademarks § 24:100.
[70] See U.S.C. § 1125(c)(1)(H) (1994 & Supp. II 1996).
[71] See H.R. Rep. No. 104-374, at 4, reprinted in 1995 U.S.C.C.A.N. 1029, 1031.
[72] See TRC Report supra note 48 at 457.
[73] See H.R. Rep. No. 104-374, at 7, reprinted in 1995 U.S.C.C.A.N. 1034.
[74] See TRC Report, supra note 48, at 457.
[75] See H.R. Rep. No. 104-374, at 4, reprinted in 1995 U.S.C.C.A.N. 1031.
[76] See TRC Report, supra note 48, at 459.
[77] See id.
[78] See TRC Report, supra note 48, at 455. "A limited category of trademarks, those which are truly famous and
registered, are deserving of national protection from dilution . . . We therefore urge the adoption of a highly selective
federal dilution statute.
[79] See J. Thomas McCarthy, McCarthy on Trademarks § 24:109 (4 th ed. 1995).
[80] See U.S.C. § 1125(c)(1) (1994).
[81] H.R.Rep. No. 104-374, at e, reprinted in 1996 U.S.C.C.A.N. at 1030.
[82] Anheuser-Busch, Inc. v. Andy's Sportswear, Inc., 1996 WL 657219, 40 USPQ2d 1542 (ND Cal. 1996).
[83] Polo Ralph Lauren L.P. v. Schuman, 1998 WL 110059, 46 USPQ2d 1046 (SD Tex., 1998).
[84] Toys "R" Us, Inc. v. Akkaoui, 1996 WL 772709, 40 USPQ2d 1836 (ND Cal., 1996).
[85] Hotmail Corp. v. Van$ Money Pie Inc., 1998 WL 388389, 47 USPQ2d 1020 (ND Cal., 1998).
[86] See Michael Caruso & Co., Inc. v. Estefan Enters., Inc., 994 F. Supp. 1454, 1463 (S.D. Fla. 1998); Knaack
Mfg. Co. v. Rally Accessories, Inc., 955 F. Supp. 991, 1003 (N.D. Ill. 1997); Golden Bear Int'l, Inc. v. Bear U.S.A.,
Inc., 969 F. Supp. 742, 749 (N.D. Ga. 1996).
[87] Kenneth L. Port, The "Unnatural" Expansion of Trademark Rights: Is a Federal Dilution Statute Necessary?,
18 Seton Hall Legis. J. 433, 459 (1994).
[88] 163 F.3d 27 (1st Cir. 1998).
[89] Id. at 47.
[90] 189 F.3d 868 (9th Cir. 1999).
[91] Id. at 879.
[92] 15 U.S.C. §§ 1125(c), (Supp. IV 1998).
[93] 15 U.S.C. §§ 1125 (c), (Supp. IV 1998).
[94] 15 U.S.C. § 1127 (Supp. IV 1998) ("The term 'dilution' means the lessening of the capacity of a famous mark to
identify goods or services, regardless of the presence or absence of … likelihood of confusion…"); see also H.R.
Rep. No. 104-374, at 3 (1995) reprinted in 1995 U.S.C.C.A.N. 1029, 1030 ("Dilution does not rely upon the
standard test of infringement, that is, likelihood of confusion, deception or mistake.")
[95] 163 F.3d 27 (1st Cir. 1998).
[96] 189 F.3d 868 (9th Cir. 1999).
[97] See I.P. Lund, 163 F.3d at 46 (observing that the FTDA extends only to "truly prominent and renowned" marks
and observing "congressional intent that courts should be discriminating and selective in categorizing a mark as
famous"); see also Avery Dennison, 189 F.3d at 875 ("Dilution is a cause of action invented and reserved for a
select class of marks -- those marks with such powerful consumer associations that even non-competing uses can
impinge on their value.")
[98] 163 F.3d at 45.
[99] 191 F.3d 208 (2d. Cir. 1999).
[100] 192 F.3d 633 (7th Cir. 1999).
[101] 191 F.3d at 215.
[102] See Hershey Foods Corp. v. Mars, Inc., 998 F. Supp. 500, 515 (M.D. Pa. 1998) ("Section 1125(c)(1) lists
certain factors we must consider on the fame element of a blurring claim."; Sports Authority v. Abercrombie &
Fitch, Inc., 965 F. Supp. 925, 941 (E.D. Mich. 1997) ("In assessing the famous nature of 'authority,' the Court must
consider factors…".
[103] 192 F.3d 633 (7th Cir. 1999).
[104] 189 F.3d 868 (9th Cir. 1999), rev'g 999 F. Supp. 1337 (C.D. Cal. 1998).
[105] 192 F.3d at 640.
[106] Id. at 641.
[107] 192 F.3d at 641.
[108] 189 F.3d 868 (9th Cir.), rev'g 999 F. Supp. 1337 (C.D. Cal. 1998).
[109] Id. at 877-79.
[110] Id. at 874.
[111] Id. at 875.
[112] Id. at 879.
[113] Brendan Mahaffey-Dowd, Note, Famous Trademarks: Ordinary Inquiry by the Courts of Marks Entitled to an
Extraordinary Remedy, 64 Brook L. Rev. 423, 435 (1998); see also Xuan-Thao N. Nguyen, The New Wild
West: Measuring and Proving Fame and Dilution Under the Federal Trademark Dilution Act, 63 Alb. L. Rev. 201,
233 (1999).
[114] 212 F.3d 157 (3rd Cir. 2000).
[115] See id. at 161.
[116] See id.
[117] See id. at 170.
[118] See id. at 171.
[119] See id. at 173.
[120] See id. at 174 (quoting Courtland L. Reichman, State and Federal Trademark Dilution, 17 Franchise L.J. 111,
133 (Spring 1998).
[121] See id. at 174.
[122] 15 U.S.C. § 1125(c)(1) (Supp. IV 1998).
[123] 192 F.3d 633, 639 (7th Cir. 1999).
[124] 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 24.92, at 24-156
("'Distinctiveness is used here only as a synonym for 'fame.' Even if 'distinctiveness' is regarded as a separate
requirement, it would, in the author's view, be redundant.").
[125] 191 F.3d 208, 51 USPQ2d 1882 (2nd Cir. 1999).
[126] 191 F.3d 208, 216 (2d. Cir. 1999). The court, in disagreement with McCarthy's arguments, stated: "We think
the inclusion of the requirement for distinctiveness was intended, for good reason, to deny the protection of the
statute to non-distinctive marks." Id. at 216 n.2.
[127] 191 F.3d at 228.
[128] 191 F.3d at 228.
[129] See H.R. Rep. No. 104-374 , at 3, reprinted in 1995 U.S.C.C.A.N. 1029, 1030.
[130] 15 U.S.C. § 1125(c)(1) 1994).
[131] 15 U.S.C. § 1125(c) (1994) (discussing the eight factors).
[132] 15 U.S.C. § 1125(c)(1) (1999).
[133] See Nabisco, 1999 WL 672575, at *4-5.
[134] See Star Markets, Ltd. v. Texaco, Inc., 950 F. Supp. 1030, 1032 (D. Haw. 1996) (noting the FTDA protects
"truly famous marks, which are presumed distinctive, but not distinctive marks if they are not also sufficiently
famous"); see also J. Thomas McCarthy, 3 McCarthy on Trademarks and Unfair Competition, § 24.91, at 24-148
(reasoning that having a separate requirement for distinctiveness would be redundant).
[135] 15 U.S.C. § 1125(c)(1)(A)-(H) (1999). The factors are: 1) the degree of inherent or acquired distinctiveness;
2) the duration and extent of use of the mark in connection with the goods or services with which the mark is used;
3) the duration and extent of advertising; 4) the geographical area in which the mark is used; 5) the channels of trade
in which the mark is used; 6) the degree of recognition of the mark within the channels of trade used by the mark
owner and the defendant; 7) the extent of use of the mark by third parties; and 8) whether the mark is
registered. See id.
[136] Mark A. Lemley, The Modern Lanham Act and the Death of Common Sense, 108 Yale L.J. 1687, 1698
(1999).
[137] See Klieger, Trademark Dilution, 58 U. Pitt. L. Rev. at 64.