Dilution by blurring applies to a “famous” mark. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1723-24 (Fed. Cir. 2012). The concern is that “the gradual whittling away of distinctiveness will cause the trademark holder to suffer ‘death by a thousand cuts.'” Nat'l Pork Bd. v. Supreme Lobster & Seafood Co., 96 USPQ2d 1479, 1497 (TTAB 2010) (citation omitted); see also Enter. Rent-A-Car Co. v. Advantage Rent-A-Car Inc., 330 F.3d 1333, 66 USPQ2d 1811, 1816 (Fed. Cir. 2003) (“dilution law is intended to protect a mark's owner from dilution of the mark's value and uniqueness”). Blurring may occur “regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.” Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289, 1298 (TTAB 2016) (quoting 15 U.S.C. § 1125(c)).

Whether the mark is sufficiently “famous” to be entitled to protection against dilution depends on whether it is widely recognized by the general consuming public as a designation of source in view of the following:

• The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties;
• 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 was registered.

15 U.S.C. § 1125(c)(2)(A)

“Perhaps the most significant of the four elements set forth in the Act to determine fame is the extent of actual public recognition of the mark as a source-indicator for the goods or services in connection with which it is used.” TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1104 (TTAB 2019).

To show dilution by blurring, the following is considered:

• the degree of similarity between Defendant's mark and Plaintiff's famous mark;
• the degree of inherent or acquired distinctiveness of Plaintiff's mark;
• the extent to which Plaintiff is engaging in substantially exclusive use of its mark;
• the degree of recognition of Plaintiff's mark;
• whether Defendant intended to create an association with Plaintiff's mark; and
• any actual association between Defendant's mark and Plaintiff's mark.

15 U.S.C. § 1125(c)(2)(B)(i-vi).

In the dilution context, the similarity between the famous mark and the allegedly blurring mark need not be substantial in order for the dilution by blurring claim to succeed. Nike, Inc. v. Maher, 100 USPQ2d 1018, 1029 (TTAB 2011); TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1115 (TTAB 2019). In considering the similarity of the marks it is sufficient if the defendant's mark triggers consumers to “conjure up” the plaintiff's mark such that “‘upon seeing the junior party's use of a mark on its goods, [consumers] are immediately reminded of the famous mark and associate the junior party's use with the owner of the famous mark, even if they do not believe that the goods come from the famous mark's owner.'” Nike, Inc. v. Maher, 100 USPQ2d 1018, 1030 (TTAB 2011); Nat'l Pork Bd. v. Supreme Lobster & Seafood Co., 96 USPQ2d 1479, 1497 (TTAB 2010).

VOGUE VEGAN

Advance Magazine Publishers Inc., publisher of VOGUE magazine opposed Brenda Joan Hollifield's VOGUE VEGAN trademark application Serial No. 86354391 for cosmetics containing no animal products or by-products based on dilution. Advance Magazine Publishers Inc. v. Hollifield, Opposition No. 91247611 and Cancellation No. 92072531 (TTAB Nov. 30, 2023).

It would be difficult to overstate the extent of public recognition of the VOGUE mark.

The TTAB found that, “[d]espite some conceptual suggestiveness,” there was “extremely high commercial strength of the mark VOGUE for magazines and online content in the field of fashion.” Also, the VOGUE mark is aggressively enforced against numerous goods and services.

The TTAB also found that with the exception of intent and evidence of actual association, the dilution factors favor finding a likelihood of dilution.

In light of this dilution finding, the TTAB declined to determine whether there was likelihood of confusion under Section 2(d). See Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1478 (TTAB 2017) (citing Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1172 (TTAB 2013))

John Welch suggested that the likelihood of confusion claim seemed “pretty weak, so maybe that's why the Board went the dilution route” in granting the opposition.

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.