David Welkowitz is a Professor of Law Emeritus at Whittier Law School in Costa Mesa, California. He has taught trademark law, international intellectual property law courses, and civil procedure, among other subjects. He was a member of the Whittier faculty from 1983 to 2018. From 2019 to 2023, he was an attorney with the U.S. Copyright Office in Washington, D.C. Prior to 1983, he practiced law in New York City. Mr. Welkowitz is the author of numerous articles on trademark law and other topics, and he is the co-author of a casebook on celebrity rights. He has also written several lessons in computer-assisted learning, which are used by law students in the areas of civil procedure and trademark law. Professor Welkowitz received his J.D. degree in 1978 from New York University Law School, where he was a member of the Law Review. He received an A.B. degree in 1975 from Princeton University. He is a member of the New York and District of Columbia bars, and is admitted to practice before the federal courts in the Southern and Eastern Districts of New York and the Court of Appeals for the Second Circuit.See Chapter 3, §I.Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d 449, 460, 50 USPQ2d 1065 (4th Cir.), cert. denied, 528 U.S. 923 (1999); Hasbro, Inc. v. Clue Computing, Inc., 66 F. Supp. 2d 117, 130, 52 USPQ2d 1402 (D. Mass. 1999), aff’d, 232 F.3d 1, 56 USPQ2d 1766 (1st Cir. 2000).Frank I. Schechter, The Rational Basis of Trademark Protection, 40 Harv. L. Rev. 813 (1927).Id. at 831.Id. at 825.See id. at 823.E.g., Me. Rev. Stat. Ann. tit. 10, ch. 301-A, §1530 (West 1997); Mo. Rev. Stat. §417.061 (West 2001); N.Y. Gen. Bus. Law §360-l (McKinney Supp. 2012). Newer state laws more closely resemble the original FTDA or the TDRA. State laws are discussed in Chapters 1–5.15 U.S.C. §1125(c)(2)(B), (C) (defining “dilution by blurring” and “dilution by tarnishment”). The original FTDA definition was found at 15 U.S.C. §1127 (definition of dilution) (superseded by the Trademark Dilution Revision Act of 2006). A number of states have added or amended their dilution statutes, emulating the FTDA structure, complete with a definition that tracks the language of the original FTDA. E.g., Alaska Stat. §45.50.180 (LexisNexis 2006) (effective 1997—the Alaska definition does not entirely track the original FTDA); Ariz. Rev. Stat. §§.44-1441 (West 2003) (effective 1998); 765 Ill. Comp. Stat. 1036/5, 1036/65 (West 2009) (effective 1998); Neb. Rev. Stat. §§87-128(3), 87-140 (LexisNexis 2003) (effective 2000); Tenn. Code Ann. §§47-25-501(3), 47-25-513 (LexisNexis 2001) (effective 2000). Others have amended their statutes to look more like the TDRA. E.g., Cal. Bus. & Prof. Code §§14202(k)–(m), 14247 (West 2008). A complete chart of state dilution laws is found in Chapter 1, §III.A.3. State laws are discussed in Chapters 1–5.Lanham Act §43(c)(1), 15 U.S.C. §1125(c)(1).Id. §43(c)(2)(B), (C), 15 U.S.C. §1125(c)(2)(B), (C).§43(c)(1), in relevant part, provides:[T]he owner of a famous mark … shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.Lanham Act §43(c)(1), 15 U.S.C. §1125(c)(1).This provision apparently was inserted because, under the pre-TDRA statute, some courts held that economic injury was an element of the claim. Compare Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 433, 65 USPQ2d 1801 (2003) (economic injury not needed), with Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d 449, 461, 50 USPQ2d 1065 (4th Cir.), cert. denied, 528 U.S. 923 (1999). Interestingly, the Fourth Circuit interprets Moseley as having required actual harm, not just actual dilution. Louis Vuitton Malletier, S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 264 n.2, 84 USPQ2d 1969 (4th Cir. 2007).Regarding genericide, see Ty, Inc. v. Perryman, 306 F.3d 509, 513–14, 64 USPQ2d 1689 (7th Cir. 2002) (rejecting genericide claim under FTDA), cert. denied, 538 U.S. 971 (2003); Plasticolor Molded Prods. v. Ford Motor Co., 713 F. Supp. 1329, 1344, 11 USPQ2d 1023 (C.D. Cal. 1989), vacated by consent judgment, 767 F. Supp. 1036, 18 USPQ2d 1975 (C.D. Cal. 1991); David S. Welkowitz, Reexamining Trademark Dilution, 44 Vand. L. Rev. 531, 558–60 (1991); Cyd B. Wolf, Trademark Dilution: The Need for Reform, 74 Trademark Rep. 311, 319–22 (1984). Genericide is discussed below in, §II.G. On other forms of dilution, see Deere & Co. v. MTD Prods., Inc., 41 F.3d 39, 44, 32 USPQ2d 1936 (2d Cir. 1994) (interpreting New York’s dilution statute, court suggested that the categories of blurring and tarnishment did not exhaust the possible forms of dilution). See also Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1326, 46 USPQ2d 1511 (9th Cir. 1998) (stating that blurring and tarnishment are not the only possible FTDA categories).Schechter’s universe of eligible marks was narrower than the category of “famous” marks used by the TDRA.Frank I. Schechter, The Rational Basis of Trademark Protection, 40 Harv. L. Rev. 813, 825 (1927).When a federal dilution statute was proposed by the United States Trademark Association in 1987, tarnishment was viewed as a separate wrong, outside of dilution. See §II.B.1, below. Frank I. Schechter, The Rational Basis of Trademark Protection, 40 Harv. L. Rev. 813, 822 (1927) (“the preservation of the uniqueness or individuality of the trademark is of paramount importance to its owner”).The original FTDA definition is used by many state dilution laws. See Chapters 1 to 5 for a discussion of dilution under state laws.Lanham Act §45, 15 U.S.C. §1127 (definition of dilution) (deleted by the Trademark Dilution Revision Act of 2006).Frank I. Schechter, The Rational Basis of Trademark Protection, 40 Harv. L. Rev. 813, 825 (1927).The issue of tarnishment under this definition was raised, but not resolved, by the Supreme Court, in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 432, 65 USPQ2d 1801 (2003). That issue is discussed further in Chapter 3, §IV.B.2.Ty, Inc. v. Perryman, 306 F.3d 509, 513–14, 64 USPQ2d 1689 (7th Cir. 2002) (rejecting genericide claim under the FTDA), cert. denied, 538 U.S. 971 (2003).The legislative history of the FTDA and TDRA is described in greater detail in Chapter 6.The United States Trademark Association Trademark Review Commission Report and Recommendations to USTA President and Board of Directors, 77 Trademark Rep. 375 (1987).Id. at 459 (“The term ‘dilution’ means the lessening of the capacity of registrant’s mark to identify and distinguish goods or services, regardless of the presence or absence of (a) competition between the parties, or (b) likelihood of confusion, mistake or deception.”). The USTA dilution proposal applied only to registered marks; its definition thus used the term “registrant’s mark” in place of “famous mark.”Id. at 455 n.134.Id.Id. at 433–35.See Hearing Before the Subcomm. on Patents, Copyrights, and Trademarks of the Comm. on the Judiciary on S. 1883, 100th Cong., 2d Sess. 37–39 (Mar. 15, 1988) (quoting proposed amendments to §43(a) and new §43(c)); see id. at 72 (statement of the USTA).Id. at 270 (statement of Michael A. Grow). See §§II.C.1. and II.G., below, for further discussions of “genericide.”S. Rep. No. 100-518, at 18–19, 41, 100th Cong., 2d Sess. (Sept. 15, 1988) (quoting amended text of the bill and explaining why the tarnishment section was deleted).Id. at 41.S. 1883 §36, 100th Cong., 2d Sess., reprinted in 134 Cong. Rec. S5684-02 (daily ed.), S5868 (1988).The concept of “blurring” is discussed in §II.D., below.See 134 Cong. Rec. H10419 (daily ed., Oct. 19, 1988); 134 Cong. Rec. S16972 (daily ed., Oct. 20, 1988).H.R. Rep. No. 104-374 at 2, 104th Cong., 1st Sess., 1995 U.S.C.C.A.N. 1029, 1029 (Nov. 30, 1995) (emphasis added).Id. at 8.But see Ty, Inc. v. Perryman, 306 F.3d 509, 513–14, 64 USPQ2d 1689 (7th Cir. 2002) (rejecting genericide claim under the FTDA), cert. denied, 538 U.S. 971 (2003).H.R. Rep. No. 106-250 at 6, 100th Cong., 1st Sess. (July 22, 1999) (discussing assistance to be given by the Trademark Trial & Appeal Board in determining “what constitutes dilution, whether by blurring or tarnishment”).Compare e.g., Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d 449, 460–61, 50 USPQ2d 1065 (4th Cir.) (requiring actual harm), cert. denied, 528 U.S. 923 (1999), with Nabisco v. PF Brands, Inc., 191 F.3d 208, 223–34, 51 USPQ2d 1882 (2d Cir. 1999) (only likelihood of dilution required), and V Secret Catalogue, Inc. v. Moseley, 259 F.3d 464, 474, 59 USPQ2d 1650 (6th Cir. 2001) (same), rev’d, 537 U.S. 418, 65 USPQ2d 1801 (2003); and compare Syndicate Sales, Inc. v. Hampshire Paper Corp., 192 F.3d 633, 641, 52 USPQ2d 1035 (7th Cir. 1999) (niche market fame sufficient), with TCPIP Holding Co. v. Haar Commc’ns, Inc., 244 F.3d 88, 99, 57 USPQ2d 1969 (2d Cir. 2001) (niche market fame insufficient).537 U.S. 418, 65 USPQ2d 1801 (2003).The Moseley decision is discussed in more detail in §II.C.3., below. The simplest way to overturn the Moseley decision would have been to change “causes dilution” in the original FTDA to “is likely to cause dilution.” But, as noted in Chapter 6, it had become clear by this time that the statute contained other deficiencies, and the INTA committee evidently decided to deal with those problems as well.For the text of the original bill as introduced, see https://www.bloomberglaw.com/document/X6Q082LC0000OD?documentName=IH&fmt=pdf..For the text of the House-passed version, see https://www.bloomberglaw.com/document/X6Q082LC0000OD?documentName=RH&fmt=pdf. The House did not materially alter the definitions in the original bill as it was introduced. The phrase “designation of source” in the original definitions was changed to “mark or trade name.”The TDRA also includes the “likelihood of dilution” standard, replacing the “causes dilution” standard that led to the issue addressed in Moseley.See Chapter 3, §IV.B.2.Lanham Act §43(c)(1), (2)(B), (2)(C), 15 U.S.C. §1125(c)(1), (2)(B), (2)(C).See Chapter 1, §§II.D.1, III.A.Lanham Act §43(c)(2)(B)(iii), 15 U.S.C. §1125(c)(2)(B)(iii). See below, §II.D.2.Deere & Co. v. MTD Prods., Inc., 41 F.3d 39, 32 USPQ2d 1936 (2d Cir. 1994) (New York law); Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1326, 46 USPQ2d 1511 (9th Cir. 1998) (registration and offering for sale of domain names); Shell Trademark Mgmt. BV v. Canadian Am. Oil Co., 2002 WL 32104586, at *7 (N.D. Cal. May 21, 2002) (magistrate judge opinion) (Shell brand gasoline possibly diluted by sale in close proximity to Touchless gasoline). The Shell case might be called an example of dilution by “close association” because there was no real similarity between the marks and the dilution; if it existed, was simply one of “free riding” by proximity to a famous mark.Lanham Act §43(c)(2)(B), 15 U.S.C. §1125(c)(2)(B).Before the TDRA, the federal dilution law contained a single definition of dilution for all purposes: “the lessening of the capacity of a famous mark to identify and distinguish goods or services.” Lanham Act §45, 15 U.S.C. §1127 (definition of “dilution”) (deleted in 2006 by the TDRA). That definition referred to the harm to the ability of the famous mark to act as a source identifier. Courts interpreted that definition to include both blurring and tarnishment, although it was not obvious that tarnishment, which does not normally attack the source identifying power of a mark, was encompassed by the definition. Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 432, 65 USPQ2d 1801 (2003). Even after the Supreme Court expressed doubts about whether the original FTDA definition included tarnishment, courts continued to allow tarnishment claims to be brought. E.g., Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 812, 69 USPQ2d 1257 (9th Cir. 2003) (dilution claim barred as noncommercial use); Nitro Leisure Prods., L.L.C. v. Acushnet Co., 341 F.3d 1356, 1365–66, 67 USPQ2d 1814 (Fed. Cir. 2003) (affirming denial of preliminary injunction for lack of evidence of actual dilution); MasterCard Int’l, Inc. v. Nader 2000 Primary Comm., Inc., 70 USPQ2d 1046, 1052–54 (S.D.N.Y. 2004) (rejecting claim on grounds of noncommercial use and lack of evidence); Playmakers, LLC v. ESPN, Inc., 297 F. Supp. 2d 1277, 1285, 69 USPQ2d 1439 (W.D. Wash. 2003) (mark found too weak to support a tarnishment claim), aff’d, 376 F.3d 894, 71 USPQ2d 1759 (9th Cir. 2004) (no ruling on dilution); Caterpillar, Inc. v. Walt Disney Co., 287 F. Supp. 2d 913, 921–22, 68 USPQ2d 1461 (C.D. Ill. 2003) (rejecting tarnishment claim for lack of evidence of actual dilution); Perkins Sch. for the Blind v. Maxi-Aids, Inc., 274 F. Supp. 2d 319, 325–26, 69 USPQ2d 1932 (E.D.N.Y. 2003) (dilution includes blurring and tarnishment); Wham-O, Inc. v. Paramount Pictures Corp., 286 F. Supp. 2d 1254, 1260–61, 68 USPQ2d 1841 (N.D. Cal. 2003) (denying preliminary injunction); World Wrestling Fed’n Entm’t, Inc. v. Big Dog Holdings, Inc., 280 F. Supp. 2d 413, 442–43 & n.21 (W.D. Pa. 2003) (denying relief; noting that the Restatement (Third) of Unfair Competition would not permit dilution claims for parodies and criticism); Four Seasons Hotels & Resorts B.V. v. Consorcio Barr, S.A., 267 F. Supp. 2d 1268, 1332 (S.D. Fla. 2003) (finding tarnishment using actual dilution standard). See AutoZone, Inc. v. Tandy Corp., 373 F.3d 786, 801, 71 USPQ2d 1385 (6th Cir. 2004) (diluting includes blurring and tarnishment) (quoting Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 466, 56 USPQ2d 1942 (7th Cir. 2000)).American Heritage Dictionary of the English Language 192 (2d College Ed. 1985). See above, §II.A., and below §II.D.1., 2., for discussions of the Lanham Act definition of blurring.See below, §§II.D.1., II.D.2.Hasbro, Inc. v. Clue Computing, Inc., 66 F. Supp. 2d 117, 134, 52 USPQ2d 1402 (D. Mass. 1999) (“‘Blurring is one mark seen by customers as now identifying two sources.’”) (quoting 3 McCarthy, McCarthy on Trademarks and Unfair Competition §24:90.1 (4th ed. 1996)), aff’d, 232 F.3d 1, 56 USPQ2d 1766 (1st Cir. 2000).Maureen Morrin & Jacob Jacoby, Trademark Dilution: Empirical Measures for an Elusive Concept, 19 J. Pub. Pol’y & Marketing 265 (2000) (indicating that less than truly famous marks may be more susceptible to dilution than famous marks). See Ty, Inc. v. Perryman, 306 F.3d 509, 511, 64 USPQ2d 1689 (7th Cir. 2002) (discussing search cost rationale), cert. denied, 538 U.S. 971 (2003).See, e.g., Barton Beebe, Roy Germano, Christopher Jon Sprigman, & Joel H. Steckel, Testing for Trademark Dilution in Court and the Lab, 86 U. Chi. L. Rev. 611, 641–654 (2019) [hereinafter Beebe, et al., Testing for Dilution]; Rebecca Tushnet, Gone in Sixty Milliseconds: Trademark Law and Cognitive Science, 86 Tex. L. Rev. 507 (2008). The Beebe, et al. authors actually ran experiments testing the Morrin and Jacoby hypothesis and concluded that there were serious flaws in the methodology and conclusions. 86 U. Chi. L. Rev. at 654.Compare Jordache Enters., Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 4 USPQ2d 1216 (10th Cir. 1987) (use of Lardashe as mark on clothes for women not tarnishing under New Mexico law), with Deere & Co. v. MTD Prods., Inc., 41 F.3d 39, 32 USPQ2d 1936 (2d Cir. 1994) (humorous alteration of Deere logo in comparative advertisement violates New York dilution law).These laws are discussed in Chapters 1–5.Lanham Act §43(c)(1), 15 U.S.C. §1125(c)(1).Id.Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 433, 65 USPQ2d 1801 (2003).But one court seemingly ignored the change, requiring actual dilution. La Quinta Worldwide, LLC v. Q.R.T.M., S.A. de CV, 2011 WL 13233546, at *7 (D. Ariz. Feb. 3, 2011). However, on a motion for reconsideration, the court conceded that this was erroneous. 2011 WL 13233431, at *2 (D. Ariz. Apr. 19, 2011).15 U.S.C. §1125(c)(1) (emphasis added) (superseded by the Trademark Dilution Revision Act of 2006).Although the TDRA resolves the issue as a matter of federal law, many states still have statutes containing the “causes dilution” language. See Chapter 3, §III.B.1.Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 223–24, 51 USPQ2d 1882 (2d Cir. 1999) (calling an actual dilution interpretation “excessive literalism”); Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 467–68, 56 USPQ2d 1942 (7th Cir. 2000) (noting difficulties of proof); V Secret Catalogue, Inc. v. Moseley, 259 F.3d 464, 470, 474–76, 59 USPQ2d 1650 (6th Cir. 2001), rev’d, 537 U.S. 418, 65 USPQ2d 1801 (2003).Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d 449, 457–61, 50 USPQ2d 1065 (4th Cir.), cert. denied, 528 U.S. 923 (1999); Westchester Media v. PRL USA Holdings, 214 F.3d 658, 671, 55 USPQ2d 1225 (5th Cir. 2000).537 U.S. 418, 65 USPQ2d 1801 (2003).Id. at 433.Id. The Court also pointed to the definition of dilution in support of its decision, noting the contrast between a “lessening of the capacity” of a mark to distinguish (presumably present tense) and the disclaimer of any need for “likelihood of confusion.” Id.Although the Court was clear that actual dilution was required, it was far less illuminating about how one proves actual dilution. A mental association alone would “not [be] sufficient to establish dilution,” id., at least “where the marks at issue are not identical.” Id. It suggested that with surveys and “through circumstantial evidence,” one could demonstrate actual dilution. Id. at 434. The only circumstance it could point to was the case of identical marks. Id. See Ty Inc. v. Softbelly’s, Inc., 353 F.3d 528, 536, 69 USPQ2d 1213 (7th Cir. 2003) (“The Court [in Moseley] did not explain and no one seems to know what that ‘circumstantial evidence’ might be.”). Thus, the identical-marks case became one in which courts often presumed that dilution existed. Savin Corp. v. Savin Group, 391 F.3d 439, 452, 73 USPQ2d 1273 (2d Cir. 2004), cert. denied, 546 U.S. 822 (2005) (actual dilution presumed where marks are identical).Because state law claims are often added as supplemental claims to federal dilution claims, federal courts will have to apply the original FTDA language to those supplemental claims for the foreseeable future. Thus far, only two states that had statutes with the “causes dilution” language have amended their laws to include the “likely to cause” language. Ala. Code §§8-12-6(2), 8-12-17(a) (2010); Miss. Code Ann. §§75-25-1(k), 75-25-25(a) (West Supp. 2011). See Chapter 3, §III.B.1.See, e.g., Century 21 Real Estate LLC v. Century Sur. Co., 2007 WL 433579, at *1 n.1, 2007 BL 222640 (D. Ariz. Feb. 6, 2007) (reconsidering summary judgment against FTDA claim after TDRA, but refusing to reconsider summary judgment against state dilution claim, where state statute tracked the original FTDA), aff’d, 300 F. App’x. 527 (9th Cir. 2008).Lanham Act §43(c)(2)(B), 15 U.S.C. §1125(c)(2)(B).Fame is an element of the dilution cause of action under federal law, but is not a necessary aspect of blurring as defined.Barton Beebe, A Defense of the New Federal Trademark Antidilution Law, 16 Fordham Intell. Prop., Media & Ent. L.J. 1143, 1163 (2006).E.g., Rolex Watch USA, Inc. v. AFP Imaging Corp., 101 USPQ2d 1188, 1194, 1196 (T.T.A.B. 2011), vacated, 2013 TTAB LEXIS 46 (T.T.A.B. Jan. 29, 2013) (applicant abandoned the application) (designated precedential July 17, 2013); Gap, Inc. v. G.A.P. Adventures, Inc., 100 USPQ2d 1417, 1431 (S.D.N.Y. 2011).§43(c)(1), 15 U.S.C. §1125(c)(1).The original FTDA had a single definition of dilution. Thus, it may have altered or eliminated some forms of dilution. See Chapter 3, §§IV.B.2 and IV.D., for a discussion of tarnishment and genericide with reference to the original FTDA definition.537 U.S. 418, 65 USPQ2d 1801 (2003).Id. at 433. See id. at 434 (“‘Blurring’ is not a necessary consequence of mental association”).Id. at 433–34. The Court then applied the same principle to the complaint of an observer about Victor’s Secret, and noted that there was no apparent change in that person’s perception of the Victoria’s Secret mark. Id. at 434.Id. See Ty Inc. v. Softbelly’s, Inc., 353 F.3d 528, 536, 69 USPQ2d 1213 (7th Cir. 2003) (“The [Moseley] Court did not explain and no one seems to know what … ‘circumstantial evidence’ might be [sufficient]”).Rolex Watch USA, Inc. v. AFP Imaging Corp., 101 USPQ2d 1188, 1194, 1196 (T.T.A.B. 2011), vacated, 2013 TTAB LEXIS 46 (T.T.A.B. Jan. 29, 2013) (applicant abandoned the application) (designated precedential July 17, 2013); Gap, Inc. v. G.A.P. Adventures, Inc., 100 USPQ2d 1417, 1431 (S.D.N.Y. 2011).Louis Vuitton Malletier, S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 264–65, 84 USPQ2d 1969 (4th Cir. 2007) (listing elements of a dilution claim). See Select Comfort Corp. v. Baxter, 2018 WL 6529493, at *7, 2018 BL 460420 (D. Minn. Dec. 12, 2018) (trial judge instructed jurors that free-riding is not prohibited by anti-dilution laws).For example, a mark may be descriptive in one context and highly original in another, causing it to stand out in the latter context, but not in the former. If the latter use is the famous one, the former (second) use may not affect the ability of the famous mark to stand out.See Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 224 n. 6, 51 USPQ2d 1882 (2d Cir. 1999); Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d 449, 456, 457-58, 50 USPQ2d 1065 (4th Cir.), cert. denied, 528 U.S. 923 (1999).In the pre-TDRA version of the statute there was a single definition that purported to include all forms of dilution.Lanham Act §43(c)(2)(B), 15 U.S.C. §1125(c)(2)(B).Id.The statute states that “the court may consider all relevant factors, including [the six listed ones].” Id.Before the Supreme Court ruled in Moseley that the original FTDA language required actual dilution, the Second Circuit promulgated a test for likelihood of dilution that included actual and likely confusion as part of the test. Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 228, 51 USPQ2d 1882 (2d Cir. 1999) (factors including “actual confusion and likelihood of confusion”). See also Cottonwood Fin. Ltd. v. The Cash Store Fin. Servs., Inc., 778 F. Supp. 2d 726, 747–49 (N.D. Tex. 2011) (in case under Texas law, using TDRA factors but also using factors of confusion to determine dilution).See generally, Barton Beebe, An Empirical Study of the Multifactor Tests for Trademark Infringement, 94 Cal. L. Rev. 1581 (2006).Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 633 F.3d 1158, 1171–73, 97 USPQ2d 1947 (9th Cir. 2011) (TDRA makes former requirement of “substantial” similarity or “identical or nearly identical” no longer applicable); Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 108, 92 USPQ2d 1769 (2d Cir. 2009) (same). See below, §§II.D.5 and III.A, for a discussion of the role of similarity. However, courts still regard use of an identical mark as sufficient to show dilution. Ford Motor Co. v. AirPro Diagnostics LLC, 632 F. Supp. 3d 753, 767 (E.D. Mich. 2022).An example might be Delta, used as a mark for an airline, a faucet manufacturer, and a dental insurance company.Maureen Morrin & Jacob Jacoby, Trademark Dilution: Empirical Measures for an Elusive Concept, 19 J. Pub. Pol’y & Marketing 265 (2000) (indicating that less than truly famous marks may be more susceptible to dilution than famous marks).See Mead Data Cent., Inc. v. Toyota Motor Sales USA, Inc., 875 F.2d 1026, 1035, 10 USPQ2d 1961 (2d Cir. 1989) (Sweet, J., concurring) (using predatory intent as a factor under New York law).Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 109, 92 USPQ2d 1769 (2d Cir. 2009).See Barton Beebe, An Empirical Study of the Multifactor Tests for Trademark Infringement, 94 Cal. L. Rev. 1581, 1582 (2006) (intent to cause confusion tends to be decisive in infringement cases).Virgin Enters., Ltd. v. Nawab, 335 F.3d 141, 150–51, 67 USPQ2d 1420 (2d Cir. 2003).Also, because the guidelines are factors, not elements of the claim, it should be understood that intent is not necessary to demonstrate likelihood of dilution. See TCBY Sys., LLC v. Stewart Enters., Inc., 2012 WL 13088911, at *3 (N.D. Cal. May 12, 2012).Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 433–34, 65 USPQ2d 1801 (2003).E.g., Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 228, 51 USPQ2d 1882 (2d Cir. 1999); Times Mirror Magazines, Inc. v. Las Vegas Sports News, LLC, 212 F.3d 157, 168, 54 USPQ2d 1577 (3d Cir. 2000). See V Secret Catalogue, Inc. v. Moseley, 259 F.3d 464, 59 USPQ2d 1650 (6th Cir. 2001), rev’d, 537 U.S. 418, 65 USPQ2d 1801 (2003). The Supreme Court’s opinion in Moseley cited the Nabisco test in the course of discussing the Sixth Circuit’s opinion but did not indicate whether the Court believed it was still viable as a test for actual dilution. See 537 U.S. at 426–27 & n.8.Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 469, 56 USPQ2d 1942 (7th Cir. 2000).E.g., Sigma Chi Fraternity v. Sethscot Collection, 2000 U.S. Dist. LEXIS 6332, at *33 (S.D. Fla. Apr. 7, 2000) (finding no dilution, even though court found confusion), aff’d mem., 48 F. App’x. 739 (11th Cir. 2002); Bulova Corp. v. Bulova do Brasil Com. Rep. Imp. & Exp. Ltda., 144 F. Supp. 2d 1329, 1331–32, 59 USPQ2d 1076 (S.D. Fla. 2001) (finding for plaintiff on all counts, including dilution); Ford Motor Co. v. Ford Fin. Solutions, Inc., 103 F. Supp. 2d 1126, 1129, 55 USPQ2d 1217 (N.D. Iowa 2000); Minnesota Mining & Mfg. Co. v. Taylor, 21 F. Supp. 2d 1003, 1005, 48 USPQ2d 1701 (D. Minn. 1998); Act Media, Inc. v. Active Media Int’l, Inc., 1996 WL 466527 at *2, 1996 BL 559 (N.D. Ill. July 17, 1996); Liquid Glass Enters., Inc. v. Dr. Ing h.c.F. Porsche AG, 8 F. Supp. 2d 398, 405 (D.N.J. 1998). See also Deborah Heart & Lung Ctr. v. Children of the World Found., Ltd., 99 F. Supp. 2d 481, 493, 55 USPQ2d 1088 (D.N.J. 2000) (use of a “confusingly similar mark for essentially the same services” causes dilution); Brown v. It’s Entm’t, Inc., 34 F. Supp. 2d 854, 859, 49 USPQ2d 1939 (E.D.N.Y. 1999) (citing loss of control over use of the mark and probability of tarnishment). This phenomenon is not unique to FTDA claims. Many cases decided under state laws contain little analysis to support their conclusions. See Chapter 3, §IV.A.1.Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 633 F.3d 1158, 1171–73, 97 USPQ2d 1947 (9th Cir. 2011); Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 108, 92 USPQ2d 1769 (2d Cir. 2009).Mead Data Cent., Inc. v. Toyota Motor Sales U.S.A., Inc., 875 F.2d 1026, 1035, 10 USPQ2d 1961 (2d Cir. 1989) (Sweet, J., concurring).E.g., Hershey Foods Corp. v. Mars, Inc., 998 F. Supp. 500, 519–20 (M.D. Pa. 1998); American Express Co. v. CFK, Inc., 947 F. Supp. 310, 316–17, 41 USPQ2d 1756 (E.D. Mich. 1996); Michael Caruso & Co. v. Estefan Enters., Inc., 994 F. Supp. 1454, 1463–64 (S.D. Fla.), aff’d mem., 166 F.3d 353 (11th Cir. 1998); Gideons Int’l, Inc. v. Gideon 300 Ministries, Inc., 94 F. Supp. 2d 566, 588 (E.D. Pa. 1999); Eli Lilly & Co. v. Natural Answers, Inc., 86 F. Supp. 2d 834, 851 (S.D. Ind.), aff’d, 233 F.3d 456, 56 USPQ2d 1942 (7th Cir. 2000) (the Seventh Circuit applied a different test on appeal); Lexington Mgmt. Corp. v. Lexington Capital Partners, 10 F. Supp. 2d 271, 289–90, 47 USPQ2d 1558 (S.D.N.Y. 1998); Westchester Media Co. L.P. v. PRL USA Holdings, Inc., 103 F. Supp. 2d 935, 981 (S.D. Tex. 1999), aff’d in part, vacated in part, 214 F.3d 658, 55 USPQ2d 1225 (5th Cir. 2000); I.P. Lund Trading ApS v. Kohler Co., 11 F. Supp. 2d 112, 126 (D. Mass.), aff’d in part, vacated in part, 163 F.3d 27, 49 USPQ2d 1225 (1st Cir. 1998). See Consolidated Cigar Corp. v. Monte Cristi de Tabacos, 58 F. Supp. 2d 188, 200 (S.D.N.Y. 1999) (using the multifactor test, but without citing Mead).Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d 449, 457–58, 50 USPQ2d 1065 (4th Cir.), cert. denied, 528 U.S. 923 (1999); V Secret Catalogue, Inc. v. Moseley, 259 F.3d 464, 473, 59 USPQ2d 1650 (6th Cir. 2001), rev’d on other grounds, 537 U.S. 418, 65 USPQ2d 1801 (2003); I.P. Lund Trading ApS v. Kohler Co.,, 163 F.3d 27, 49, 49 USPQ2d 1225 (1st Cir. 1998). See Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 227 & n.8, 51 USPQ2d 1882 (2d Cir. 1999); Robert N. Klieger, Trademark Dilution: The Whittling Away of the Rational Basis for Trademark Protection, 58 U. Pitt. L. Rev. 789, 826–27 (1997); Kenneth L. Port, The “Unnatural” Expansion of Trademark Rights: Is a Federal Dilution Statute Necessary? 18 Seton Hall Legis. J. 433, 455–60 (1994). See Chapter 3, §§IV.A.2.a.i and IV.A.2.b.But see Girl Scouts of the United States of Amer., Inc. v. Boy Scouts of Amer., 597 F. Supp. 3d 581, 604 (S.D.N.Y. 2022) (using these factors to decide both state and federal dilution claims).Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 228, 51 USPQ2d 1882 (2d Cir. 1999).V Secret Catalogue, Inc. v. Moseley, 259 F.3d 464, 476 (6th Cir. 2001), rev’d, 537 U.S. 418, 65 USPQ2d 1801 (2003); Kellogg Co. v. Exxon Corp., 209 F.3d 562, 577 (6th Cir. 2000); Times Mirror Magazines, Inc. v. Las Vegas Sports News, LLC, 212 F.3d 157, 168–69, 54 USPQ2d 1577 (3d Cir. 2000), cert. denied, 531 U.S. 1071 (2001); Binney & Smith v. Rose Art Indus., 60 USPQ2d 2000, 2004 (E.D. Pa. 2001); McNeil Consumer Brands, Inc. v. U.S. Dentek Corp., 116 F. Supp. 2d 604, 607, 56 USPQ2d 1758 (E.D. Pa. 2000). The Times Mirror case actually used both the Nabisco factors and the Mead Data factors.One district court, applying Texas law, used a combination of the TDRA factors and confusion factors drawn from the Second Circuit’s two tests. Cottonwood Fin. Ltd. v. The Cash Store Fin. Servs., Inc., 778 F. Supp. 2d 726, 744–49 (N.D. Tex. 2011).Century 21 Real Estate LLC v. Century Ins. Group, 2007 WL 484555, at *16–18, 2007 BL 223744 (D. Ariz. Feb. 6, 2007), aff’d, 300 F. App’x. 527 (9th Cir. 2008).Id. The issue of similarity with regard to blurring is discussed in §II.D.5., below.507 F.3d 252, 84 USPQ2d 1969 (4th Cir. 2007).Id. at 256. Louis Vuitton also produces a line of expensive pet accessories, id. at 258, but the court did not find this to be significant.Id. at 266–67. As the court also found, defendant could not avail itself of the “fair use” exclusion for parody under §43(c)(3)(A), because defendant used the parody as a trademark for its products. Id. at 266.See id. at 267.Id. (emphasis added). The court went on to say that “this might not be true if the parody is so similar to the famous mark that it likely could be construed as actual use of the famous mark itself.” Id. at 268. It is unclear whether the court thought that would trigger confusion (not necessarily dilution), whether a parody using the actual mark would always be deemed unsuccessful, or whether a successful parody using the actual mark somehow is thought to create blurring where a successful one not using the actual mark would not.Id. at 267.Id. at 268. The court also found no dilution by tarnishment. Id. at 268–69. This is discussed below, §II.E.2.c. Louis Vuitton was distinguished in Hershey Co. v. Art Van Furniture, Inc., 2008 WL 4724756, 2008 BL 241740 (E.D. Mich. Oct. 24, 2008), where the court found that a “couch bar” used by defendant was likely to dilute Hershey’s mark of a “candy bar” sticking out from an open wrapper. The court said that defendant’s image “may be funny, but it is not biting; its resemblance to Plaintiff’s famous trade dress is too muted to poke fun, yet too transparent to evoke a generic candy bar.” Id. at *15. In another parody dog toy case, Anheuser-Busch, Inc. v. VIP Products, LLC, 666 F. Supp. 2d 974 (E.D. Mo. 2008), the court denied claims of dilution by blurring and dilution by tarnishment brought against defendant’s use of a Buttwiper dog squeeze toy with a facsimile of the Budweiser beer label (substituting Buttwiper) on the toy. However, the court’s analysis was flawed; it insisted on evidence of actual dilution, apparently ignoring the critical change in the statute wrought by the TDRA. Id. at 987.Louis Vuitton Malletier v. Dooney & Bourke, Inc., 561 F. Supp. 2d 368, 91 USPQ2d 1347 (S.D.N.Y. 2008).See below, §§II.D.5 and III.A, for a discussion of the role of similarity.The actual dilution standard was used because Louis Vuitton sought damages and the activity in question occurred prior to the effective date of the TDRA.561 F. Supp. 2d at 392 (citing Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 433, 65 USPQ2d 1801 (2003)). See Volkswagen AG v. Dorling Kindersley Publ’g, Inc., 614 F. Supp. 2d 793, 808 (E.D. Mich. 2009) (mental association not sufficient to show dilution) (citing Moseley).561 F. Supp. 2d at 392. Unfortunately, the court did not distinguish between the popularity of Louis Vuitton in general and the popularity of the Monogram Multicolore mark. Perhaps this was because the evidence introduced did not permit such a distinction.2007 U.S. Dist. LEXIS 90487 (C.D. Cal. Sept. 20, 2007).Nissan Computer is owned by a Mr. Uzi Nissan.In an earlier opinion, the court found that Nissan Computer’s acceptance of automobile-related advertising on its Web site constituted infringement. See id. at *12, *27. That ruling was affirmed by the Ninth Circuit. An earlier opinion also found dilution, but that ruling was reversed by the Ninth Circuit and the case was remanded. Id. at *28.The TDRA requires that the mark be famous before the second use begins.Id. at *29 n.10.Id. at *39.Id. at *40.Id. at *41–42.Id. at *42–43.Although most of Nissan Computer’s uses appeared not to be exploitative, its brief placement of auto-related advertising on its Web site (subsequently enjoined by the court) was seen as predatory, balancing out its good faith. Id. at *44.In another potentially significant statement, the court asserted that “there is no authority for … a per se dilution rule” based on another’s registration of a famous mark as a domain name. Id. at *45 n.16. This issue is discussed below, §II.H.2.Id. at *47. However, the court’s apparent assumption that a user accidentally encountering the Nissan Computer site would not “associate” it with Nissan Motor may reflect an inexact understanding of “association.” Association in the blurring context connotes a “calling to mind,” not necessarily confusion. Association is a necessary part of blurring, but it is not sufficient. Blurring requires an association that impairs the distinctiveness of the famous mark. Not all associations will cause such harm. The court may have believed that the kind of association triggered by landing on Nissan Computer’s site would not cause any harm to Nissan Motor’s distinctiveness.Id. at *48.See id. at *54–55.Id. at *49–51.Id. at *51 n.20 (noting that the Ninth Circuit had characterized Moseley’s indication of such a presumption as dicta).Id. at *52–53. Cybersquatting is discussed in Chapter 14.Id. at *53The court also found no dilution by tarnishment. Id. at *56–58.V Secret Catalogue, Inc. v. Moseley, 558 F. Supp. 2d 734, 87 USPQ2d 1240 (W.D. Ky. 2008), aff’d on other grounds, 605 F.3d 382, 95 USPQ2d 1050 (6th Cir. 2010), cert. denied, 131 S. Ct. 1003 (2011). The district court held that the new statute, not the original one, should now be applied. Id. at 738–39. The district court noted that, despite the fact that the Moseleys moved to vacate the injunction against them in 2003, the case sat in the court of appeals, without any action, until 2007. Id. at 737.Id. at 749. Indeed, the court did find dilution by tarnishment. That aspect of the court’s opinion, and the Sixth Circuit’s opinion affirming that determination, is discussed in §II.E.2.a.ii, below.Id. at 748. See Volkswagen AG v. Dorling Kindersley Publ’g, Inc., 614 F. Supp. 2d 793, 808 (E.D. Mich. 2009) (consumer survey showing that consumers associated defendants’ Fun Cars with the Volkswagen Beetle did not demonstrate any likely harm to the distinctiveness of the mark).Newsboys v. Warner Bros. Records, Inc., 2013 U.S. Dist. LEXIS 97695, at *13–14 (M.D. Tenn. July 11, 2013) (citing the Supreme Court’s Moseley opinion). Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 2009 U.S. Dist. LEXIS 33923 (N.D. Cal. Apr. 22, 2009), rev’d, 633 F.3d 1158, 97 USPQ2d 1947 (9th Cir. 2011).See Louis Vuitton Malletier v. Dooney & Bourke, Inc., discussed in this Section, above.2009 U.S. Dist. LEXIS 33923, at *23 (N.D. Cal. Apr. 22, 2009). The court used the “identical or nearly identical” test for similarity. Id. Because there were claims for damages as well as injunctive relief, the court submitted the claims to a jury. Id. However, it recognized that, with respect to the injunctive claims, the jury was advisory. Id. at *2–3.Id. at *24–25.Id. at *25.Id.633 F.3d 1158, 97 USPQ2d 1947 (9th Cir. 2011).Id. at 1162.Id. at 1173–74. The Ninth Circuit’s analysis of the standard for similarity is discussed below §§II.D.5., III.A.100 USPQ2d 1417 (S.D.N.Y. 2011)Id. at 1430–31.Id. at 1431 (referring partly to infringement findings, but finding all blurring factors favoring plaintiff).Id. (quoting 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §24:120 (4th ed. 2011)).Id.101 USPQ2d 1188, 1196 (T.T.A.B. 2011), vacated, 2013 TTAB LEXIS 46 (T.T.A.B. Jan. 29, 2013) (applicant abandoned the application) (decision designated precedential July 17, 2013).Id. at 1189.Id. at 1194 (quoting Nike, Inc. v. Maher, 100 USPQ2d 1018, 1023 (T.T.A.B. 2011)).Id. at 1195.Id. at 1196.Id. at 1195.100 USPQ2d 1199 (W.D. Va. 2011).Id. at 1212.Id. The defendant, an alumnus of the plaintiff, id. at 1202, considered himself “a Hokie.”Id.716 F. App’x 618, 125 USPQ2d 1105 (9th Cir. 2017). Id. at 621. 888 F. Supp. 2d 738 (E.D. Va. 2012), aff’d, 739 F.3d 150, 109 USPQ2d 1291 (4th Cir. 2014). Id. at 757–58. The defendant had a registered mark, which plaintiff sought to cancel. Id. at 756. At the time of the decision, the TDRA contained a provision that appeared to bar even a federal dilution claim against a federally registered mark. See Chapter 10, §V. 2013 WL 12157828, 2013 BL 19594 (D.N.J. Jan. 18, 2013). Id. at *24. Id. at *25. Id. at *26. Id. at *26–27. Id. at *26. 110 USPQ2d 1404 (N.D. Ill. 2014), aff’d, 815 F.3d 1064, 117 USPQ2d 1879 (7th Cir. 2016). Id. at 1409. Hugunin v. Land O’ Lakes, Inc., 815 F.3d 1064, 1067, 117 USPQ2d 1879 (7th Cir. 2016). Some of this language almost looks like the language of confusion, but it is clear that the court did not think that mere association would be sufficient to demonstrate dilution. 156 F. Supp. 3d 425, 117 USPQ2d 1537 (S.D.N.Y. 2016), aff’d, 674 F. App’x 16 (2d Cir. 2016). Id. at 439. As discussed in Chapter 10, §II.C, the court also found that the fair use exclusion barred any possible dilution liability (id. at 435–38), a ruling that was affirmed by the Second Circuit. 674 F. App’x 16 (2d Cir. 2016). My Other Bag, 156 F. Supp. 3d at 439. Louis Vuitton Malletier, S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007). My Other Bag, 156 F. Supp. 3d at 440. See Patagonia, Inc. v. PT Apparel LLC, 2023 BL 263683, at *6–7 (C.D. Cal. Aug. 1, 2023) (granting default judgment, finding dilution by blurring via several parody-like uses of the Patagonia mark); Carter-Knowles v. Feyonce, Inc., 347 F. Supp. 3d 217, 228 (S.D.N.Y. 2018) (denying summary judgment, finding that the parody-like use of “Feyonce” as a mark created an issue of fact as to likelihood of dilution).The court in My Other Bag specifically rejected the analysis of Louis Vuitton Malletier, S.A. v. Hyundai Motor Am., 2012 BL 388427 (S.D.N.Y. Mar. 22, 2012), in which a court found Hyundai’s use of a gold basketball with a Louis Vuitton trademark to be blurring. The My Other Bag court stated that the Hyundai court “blurred the distinction between association and dilution.” 156 F. Supp. 3d at 436 n.4. 117 USPQ2d 1327 (C.D. Cal. Dec. 15, 2015). Id. at 1329. Id. at 1330–32, 1334. Readers should also note the effect of the Supreme Court’s decision in Jack Daniel’s Props, Inc. v. VIP Prods. LLC, 599 U.S. 140 (2023), discussed in Chapter 10, regarding the application of the noncommercial use exclusion to parody cases. Even in non-parody cases, it may be difficult to dismiss dilution cases at the pleading stage. See, e.g., Mighty Deer Lick, Inc. v. Morton Salt Inc., No. 17-cv-05875, 2020 BL 48992, at *8 (N.D. Ill. Feb. 11, 2020) (declining to dismiss complaint).736 F.3d 198, 108 USPQ2d 1581 (2d Cir. 2013). The previous two opinions are reported at 588 F.3d 97, 92 USPQ2d 1769 (2d Cir. 2009), and 477 F.3d 765, 81 USPQ2d 1927 (2d Cir. 2007). 588 F.3d at 108. The Ninth Circuit followed this portion of the opinion in Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 633 F.3d 1158, 1172–73, 97 USPQ2d 1947 (9th Cir. 2011). This aspect of the decision is discussed in more detail below in §III.A. of this chapter.588 F.3d at 106–07. The Second Circuit adhered to that decision in Starbucks VI. 736 F.3d at 208. 588 F.3d at 107, 108. Id. at 109. Curiously, a district court, while citing the Starbucks IV opinion, analogized this factor to “bad faith” factors in infringement. Bath & Body Works Brand Mgmt. v. Summit Entm’t, LLC, 7 F. Supp. 3d 385, 400 (S.D.N.Y. 2014). 588 F.3d at 109. Id. Id. Id. at 109–10. Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 101 USPQ2d 1212, 1217 (S.D.N.Y. 2011). Id. at 1216. Here the court cited the Second Circuit’s opinion in Starbucks II (the first appeal). Id. at 1215–16. Id. at 1217. Id. at 1216. Id. at 1216–17. Id. at 1217. The standard of review used by the court of appeals is noteworthy. It “review[s] the [district] court’s determination as to each factor for clear error and its balancing of those factors de novo.” 736 F.3d 198, 207, 108 USPQ2d 1581 (2d Cir. 2013). Id. at 208. Id. at 208–09. Id. at 209. Id. at 210. Id. at 211. Id. at 212. Id. (emphasis added). Id. at 213. Lanham Act §43(c)(2)(B), 15 U.S.C. §1125(c)(2)(B). See Beebe, et al., Testing for Dilution, supra note NOTEREF _Ref43544975 \h 58, at 621–36 (criticizing the use of brand association surveys as a substitute for brand impairment).704 F. Supp. 2d 305, 95 USPQ2d 1451 (S.D.N.Y. 2010).Id. at 323.Id.In a similarly questionable situation, the court in CrossFit, Inc. v. Maximum Human Performance, LLC, 2013 U.S. Dist. LEXIS 53676, at *8–9 (S.D. Cal. Apr. 12, 2013), granted a preliminary injunction, finding likelihood both of fame (for the “CrossFit” mark) and dilution by blurring, the latter with very little discussion apart from a reference to the court’s earlier discussion of similarity in connection with confusion. 672 F. Supp. 2d 575, 93 USPQ2d 1652 (S.D.N.Y. 2009).Id. at 593. This court, like the New York City Triathlon court, followed the Second Circuit’s decision in Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 92 USPQ2d 1769 (2d Cir. 2009), on the issue of the level of required similarity.672 F. Supp. 2d at 593–94.Id. at 594.Id. (“The intent factor does not ask whether a defendant acted in bad faith.”).Id. The fact that this court did not find confusion may be significant as well.Id.Id. at 595. The court also ruled against a state dilution claim. Id. at 595–96. This is discussed further in Chapter 3.In a very odd case, one district court, after concluding that New York and federal law should be analyzed the same way, applied factors used under New York law in lieu of the TDRA factors to find dilution. Gucci Am., Inc. v. Gucci, 2009 U.S. Dist. LEXIS 124888, at *78–80 (S.D.N.Y. Aug. 5, 2009). Given the Second Circuit’s rejection of the equation of New York and federal law, see Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 114, 92 USPQ2d 1769 (2d Cir. 2009), this decision should be regarded as aberrational.84 USPQ2d 1820 (E.D. Cal. 2007).Id. at 1822.The Ninth Circuit had used this test in place of substantial similarity. Whether it made any difference in the cases is unclear. The Ninth Circuit has since changed the standard it uses for similarity. See §III, below,.The court found that, although there were some other “Nike” mark users, those uses were minor. 84 USPQ2d at 1827.The court did not believe defendant’s explanation of how its mark was chosen. Id. at 1828.Id. at 1824–25, 1828.328 F. Supp. 3d 1007 (N.D. Cal. 2018).Id. at 1023.Id. at 1024. The court found only one other user of Versace, in another product area.Id. 2008 WL 4724756, 2008 BL 241740 (E.D. Mich. Oct. 24, 2008).Id. at *15.Id.590 F. Supp. 2d 1306 (D. Nev. 2008), aff’d, 610 F.3d 1088, 95 USPQ2d 1571 (9th Cir. 2010).Id at 1320. In Dallas Cowboys Football Club, Ltd. v. America’s Team Props., Inc., 616 F. Supp. 2d 622, 92 USPQ2d 1325 (N.D. Tex. 2009), the court found that defendant’s sale of America’s Team merchandise infringed and diluted the football team’s mark. However, when considering blurring, although the court stated that the factors of similarity and intent to cause association favored the plaintiff, the court did not come to a conclusion about blurring, and appeared to rest its decision about dilution on the issue of tarnishment. Id. at 643.610 F.3d 1088, 1091, 95 USPQ2d 1571 (9th Cir. 2010).Id.Id. at 1092 (noting that “[the mark] Visa plays only weakly off the word’s association with international travel”).Id. at 1090. See General Motors Corp. v. Rapp Chevrolet, Inc., 2013 U.S. Dist. LEXIS 74234, at *21 (D.S.D. May 21, 2013) (franchise holdover; court cites essentially identical mark, though without the “bow” logo).Visa Int’l, 610 F.3d at 1091.Id. at 1090, 1092 (“the injury addressed by anti-dilution law in fact occurs when marks are placed in new and different contexts, thereby weakening the mark’s ability to bring to mind the plaintiff’s goods or services”).2012 U.S. Dist. LEXIS 151569 (S.D.N.Y. Oct. 17, 2012) (default judgment). Id. at *14–15. 2019 WL 1081039, 2019 BL 83986 (D. Colo. Jan. 18, 2019) (magistrate judge; default judgment recommended).Id. at *7.Id. at *8.2018 WL 4854069, 2018 BL 368818 (E.D. Va. Oct. 5, 2018).Id. at *2. Accord Juul Labs, Inc. v. Unincorporated Ass’ns Identified in Schedule A, 2019 WL 2411427, at *2 (E.D. Va. June 7, 2019).2020 WL 1821023, 2020 BL 134514 (E.D. Mich. Apr. 10, 2020).Id. at *3.No. CV 17-2149 (SJF)(AYS), 2020 WL 1914762 (E.D.N.Y. Feb. 28, 2020) (magistrate judge opinion).Id. at *10.2023 WL 7107272, at *6–7, 2023 BL 263683 (C.D. Cal. Aug. 1, 2023).886 F. Supp. 2d 529, 105 USPQ2d 1230 (E.D. Va. 2012). Id. at 536. adidas Am., Inc. v. Skechers USA, Inc., 149 F. Supp. 3d 1222, 1247 (D. Or. 2016), aff’d in part, rev’d in part on other grounds, 890 F.3d 747 (9th Cir. 2018). Id. 890 F.3d 747, 758–59 (9th Cir. 2018). The appeals court reversed the district court on the issue of irreparable harm. Id. at 759–60. This issue is discussed in Chapter 11, §A. Id. Deere & Co. v. FIMCO, Inc., 302 F. Supp. 3d 837 (W.D. Ky. 2017). Id. at 901. Id. at 897–900. Id. at 901. Louis Vuitton Malletier, S.A. v. Hyundai Motor Am., 2012 U.S. Dist. LEXIS 42795, at *3–4 (S.D.N.Y. Mar. 22, 2012).Id. at *18–34. The evidence of actual association was somewhat meager compared with other cases, at only 15% in Louis Vuitton’s expert survey. Id. at *30. But the court still found it to be favorable to Vuitton. Id. at *31–34.It could be seen as possible tarnishment, if people were confused and also believed that Hyundai was a low quality brand. But the court did not present that argument. The court also rejected a fair use argument. Id. at *47–61.In the European Union, free riding is a separate form of dilution. See Chapter 15, §III.A.1.d.96 USPQ2d 1479 (T.T.A.B. 2010).Id. at 1497.Id. at 1497–98.Id. at 1498.Id.Id. at 1498 & n.36.100 USPQ2d 1018 (T.T.A.B. 2011).Id. at 1027.Id. at 1027–30. As to exclusivity of use, the Board discounted third-party registrations in the absence of any showing of actual use. Id. at 1028.Id. at 1030.Id.Id. at 1030–31.Id. at 1031.Id.Id.Id.100 USPQ2d 1868 (T.T.A.B. 2011).Id. at 1871.Id. at 1888–89.Id. at 1888.Id.Id. at 1889.Id. at 1889–90.102 USPQ2d 1187 (T.T.A.B. 2012).Id. at 1189.Id. at 1889–90. The Board still went through the factors, finding similarity, high degree of recognition, and intent to create an association. Id. at 1198–99. It also found actual association. Id. at 1199.Id. at 1199–1200. The fair use exclusion is discussed in Chapter 10, §II.Id. at 1200.Id.110 USPQ2d 2013 (T.T.A.B. 2014). It is worth noting that the applicant in this case did not file a brief in opposition to the opposer’s materials. The case was decided using an expedited procedure that was stipulated to by both parties. Id. at 2016–17. Id. at 2025. See, e.g., Visa Int’l Serv. Ass’n v. JSL Corp., 610 F.3d 1088, 1090, 95 USPQ2d 1571 (9th Cir. 2010) (citing cases invoking a presumption of dilution where the marks are identical); Wells Fargo Bank, N.A. v. United Credit Recovery, LLC, 2015 U.S. Dist. LEXIS 183689 (M.D. Fla. Mar. 4, 2015) (magistrate judge opinion) (presuming dilution from use of identical marks). Cf. Nike, Inc. v. Capital E Fin. Co., 2016 WL 3771778, at *8 (T.T.A.B. June 24, 2016) (non-precedential) (noting that the marks were “in part identical” and that this favored a finding of likely dilution). See Chapter 8, §III.A.1, for a discussion of the Board’s analysis of fame. Chanel, 110 USPQ2d at 2025, 2026. Although the Chanel mark is derived from the name of its founder, designer “Coco” Chanel, its acquired distinctiveness was deemed very high. Id. at 2025. Id. at 2025–26. Id. at 2026. Id. Id. 114 USPQ2d 1497 (T.T.A.B. 2015). Id. at 1512. It is noteworthy that this case was decided by a panel of seven Administrative Trademark Judges, including the Chief Judge and the Deputy Chief Judge. See Chapter 8 for a discussion of the issue of fame of the Yankees’ marks. In the context of an intent-to-use application, the Board has held that the date of application constitutes a constructive use date for use in commerce purposes and for determining the relevant date for fame. 114 USPQ2d at 1505–06. In the case of the logo mark, all but the factor of actual association favored the Yankees. In the case of the word mark, all but actual association and exclusive use favored the Yankees. The other factors were found to be neutral. 114 USPQ2d at 1507. Id. at 1508. There was no evidence of actual association—not surprising in an intent-to-use situation. Id. at 1509. Nevertheless, it is interesting that the Yankees did not attempt a survey. That omission might be significant if the applicant actually uses the mark despite the rejection and the Yankees want to use the TTAB decision preclusively in a subsequent suit. See id. at 1509 (citing Research in Motion Ltd. v. Defining Presence Mktg. Grp., Inc., 102 USPQ2d 1187, 1200 (T.T.A.B. 2012) (citing Louis Vuitton Malletier, S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 84 USPQ2d 1969 (4th Cir. 2007))). Id. at 1509–10. Unfortunately, this distinction also appears to have been lost on the applicant, who, according to the Board, “assert[ed] as an affirmative defense that its marks are parodies.” Id. at 1509. Haute Diggity Dog, 507 F.3d at 267. The record showed a number of third-party registrations of takeoffs on The House That Ruth Built. New York Yankees P’ship, 114 USPQ2d at 1511. But the applicant supplied little evidence of use of those marks, so the Board found the exclusivity factor to be neutral. Id. Id. at 1512. As with the TopHat logo parody, the Board did not set out how the Yankees’ mark would be harmed by the parody. ESRT Empire State Bldg., L.L.C. v. Liang, Opp. No. 91204122, at 19 (T.T.A.B. June 17, 2016) (non-precedential). Id. at 17. Id. Id. at 17–18. Id. at 18. Id. at 19. Id. (“these factors [lack of intent or actual association] are insufficient to overcome a finding of dilution in this case”). Id. at 13–14. 2016 WL 3771778 (T.T.A.B. June 24, 2016) (non-precedential). Id. at *9. Id. at *8. Id. Id. at *11. Even if the mental association does occur, that does not necessarily mean that dilution is likely to occur. Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 434, 65 USPQ2d 1801 (2003) (“‘Blurring’ is not a necessary consequence of mental association. (Nor, for that matter, is ‘tarnishing.’)”).Luigino’s, Inc. v. Stouffer Corp., 170 F.3d 827, 833, 50 USPQ2d 1047 (8th Cir. 1999).E.g., Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 955 F. Supp. 605, 618, 42 USPQ2d 1161 (E.D. Va. 1997), aff’d, 170 F.3d 449, 50 USPQ2d 1065 (4th Cir.), cert. denied, 528 U.S. 923 (1999); McNeil Consumer Brands, Inc. v. U.S. Dentek Corp., 116 F. Supp. 2d 604, 608, 56 USPQ2d 1758 (E.D. Pa. 2000); Eli Lilly & Co. v. Natural Answers, Inc., 86 F. Supp. 2d 834, 852 (S.D. Ind.), aff’d, 233 F.3d 456, 56 USPQ2d 1942 (7th Cir. 2000); Hershey Foods Corp. v. Mars, Inc. 998 F. Supp. 500, 520 (M.D. Pa. 1998); American Cyanamid Corp. v. Nutraceutical Corp., 54 F. Supp. 2d 379, 392 (D.N.J. 1999); Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. B.E. Windows Corp., 937 F. Supp. 204, 211, 40 USPQ2d 1010 (S.D.N.Y. 1996); Elvis Presley Enters., Inc. v. Capece, 950 F. Supp. 783, 798 (S.D. Tex. 1996), rev’d on other grounds, 141 F.3d 188, 46 USPQ2d 1737 (5th Cir. 1998); Michael Caruso & Co. v. Estefan Enters., Inc., 994 F. Supp. 1454, 1464 (S.D. Fla.), aff’d mem., 166 F.3d 353 (11th Cir. 1998); Toro Co. v. ToroHead, Inc., 61 USPQ2d 1164, 1183 (T.T.A.B. 2001). See Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 218, 51 USPQ2d 1882 (2d Cir. 1999).Lanham Act §43(c)(2)(B), (C), 15 U.S.C. §1125(c)(2)(B), (C).See Century 21 Real Estate, LLC v. Century Ins. Group, 2007 WL 484555, at *15, 2007 BL 223744 (D. Ariz. Feb. 6, 2007) (lack of substantial similarity means a lack of mental association), aff’d, 300 F. App’x. 527 (9th Cir. 2008). Even before the TDRA, the similarity between the user’s mark and the famous mark was an essential facet of the analysis. The Nabisco multifactor analysis, the more simplified Eli Lilly analysis, and the Moseley actual-harm test all considered the similarity of the marks. Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 218, 51 USPQ2d 1882 (2d Cir. 1999); Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 469, 56 USPQ2d 1942 (7th Cir. 2000); Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 432, 65 USPQ2d 1801 (2003). See also Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d 449, 453, 50 USPQ2d 1065 (4th Cir.), cert. denied, 528 U.S. 923 (1999) (discussing need for similarity). Under Moseley, if the uses were so similar as to be considered identical, then that would constitute circumstantial evidence of dilution. Moseley, 537 U.S. at 434.See Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 107–08, 92 USPQ2d 1769 (2d Cir. 2009) (discussing the substantial similarity requirement that prevailed prior to the TDRA).See Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 633 F.3d 1158, 1162–65, 97 USPQ2d 1947 (9th Cir. 2011) (discussing the “identical or nearly identical” requirement that formerly prevailed in the Ninth Circuit). See also below, §III.A. for a discussion of the “substantial similarity” requirement.Lanham Act §43(c)(2)(B), 15 U.S.C. §1125(c)(2)(B).Id. §43(c)(2)(B)(i), 15 U.S.C. §1125(c)(2)(B)(i).588 F.3d 97, 92 USPQ2d 1769 (2d Cir. 2009).Id. at 108.Id.Id. The court opined that a highly distinctive mark may be diluted more by a less similar mark than one of lesser distinctiveness. Id. at 109. It remanded to the district court to analyze the matter further on the facts of the case. Id. at 108–09. The Second Circuit reaffirmed its approach in Tiffany (NJ), Inc. v. eBay, Inc., 600 F.3d 93, 111 n.17, 94 USPQ2d 1188 (2d Cir.), cert. denied, 131 S. Ct. 647 (2010). However, the Starbucks court retained the substantial similarity test for state law dilution claims, making the analysis of dilution cases that include state claims somewhat more complicated. 588 F.3d at 114. Since all but a few state dilution statutes are either similar to the New York statute construed in Starbucks, or use the language of the original FTDA, presumably most would still be analyzed under the substantial similarity standard. Less clear is the analysis under state statutes patterned after the 2007 Model Bill. Although those statutes use the TDRA’s definition of dilution by blurring, they do not include the statutory factors. See Chapter 3, §III.B.3, for a discussion of this issue.633 F.3d 1158, 97 USPQ2d 1947 (9th Cir. 2011).Id. at 1162–64 (citing Thane Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 64 USPQ2d 1564 (9th Cir. 2002) and Playboy Enters., Inc. v. Welles, 279 F.3d 796, 61 USPQ2d 1508 (9th Cir. 2002)).In Thane International, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 64 USPQ2d 1564 (9th Cir. 2002), where the question was the similarity of the mark OrbiTrek to the allegedly famous mark Trek (the latter primarily known as a mark for bicycles), the court found that a jury could view them as identical or nearly so. Id. at 907. In Perfumebay.com, Inc. v. eBay, Inc., 506 F.3d 1165, 84 USPQ2d 1865 (9th Cir. 2007), the Ninth Circuit found that Perfumebay was sufficiently similar to eBay to merit dilution protection. Id. at 1181. In particular, the court held that the district court (which had ruled the two marks were not sufficiently similar) erred by not considering the strength of the eBay mark in its similarity analysis. Id. As a result, it appears that the test of “nearly identical” is of little value, because all of the marks in question will be very strong and, presumably, all will be considered “nearly identical” to a very large range of marks.633 F.3d at 1166–68 (noting its citation in three post-TDRA cases in the Ninth Circuit).Id. at 1170–71.Id. at 1172.Id. at 1171.Id. at 1172–73.Id. at 1172 n.10.Id. at 1172. The court then decided that the district court’s reliance on that standard was not harmless, and remanded for reconsideration using the proper standard. Id. at 1174–75. On remand, Levi Strauss apparently decided not to pursue its dilution claim and it was dismissed. See Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 1370, 107 USPQ2d 1167 (Fed. Cir. 2013) (recounting the history of the litigation between the parties).633 F.3d at 1173 n.12.94 USPQ2d 1645 (T.T.A.B. 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011) (the Federal Circuit did not discuss this aspect of the TTAB’s decision).Id. at 1667.Id. It noted when analyzing likelihood of confusion, a single factor could be determinative, and adopted a similar approach to dilution, id. (citing Kellogg Co. v. Pack’em Enters., Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991)). On the other hand, rather than deny a dilution claim solely on the basis of lack of substantial similarity, the TTAB analyzed the other factors as well, finding that the lack of substantial similarity meant that this factor weighed heavily against the opposer. Id. at 1667 (weight of similarity factor), 1668–69 (applying other TDRA factors).100 USPQ2d 1018 (T.T.A.B. 2011).Id. at 1029–30.UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868, 1888 (T.T.A.B. 2011); see Research in Motion Ltd. v. Defining Presence Mktg. Group, Inc., 102 USPQ2d 1187, 1197 (T.T.A.B. 2012) (“it is sufficient that the terms be highly similar”).E.g., Hershey Co. v. Promotion in Motion, Inc., 2013 WL 12157828, at *23, 2013 BL 19594 (D.N.J. Jan. 18, 2013) (finding the issue unresolved in the Third Circuit). See Shell Trademark Mgmt. BV v. Canadian Am. Oil Co., 2002 WL 32104586, at *7 (N.D. Cal. May 21, 2002) (stating that sales of a competing gasoline brand by franchisee with a very dissimilar name at the same gas station raised a “serious question” as to whether dilution by blurring could result) (magistrate judge opinion).E.g., Visa Int’l Serv. Ass’n v. JSL Corp., 610 F.3d 1088, 1090, 95 USPQ2d 1571 (9th Cir. 2010); Caracol Television, S.A. v. TVMia Int’l Corp., 2017 WL 6389719, at *3, 2017 BL 445105 (S.D. Fla. Dec. 13, 2017) (identity of marks sufficient—notably, the court did not even discuss fame); Bentley Motors Corp. v. McEntegart, 976 F. Supp. 2d 1297, 1314 (M.D. Fla. 2013). See Chanel, Inc. v. Van Doren, 2016 WL 7444995, at *5–6, 2016 BL 431548 (N.D. Tex. Nov. 28, 2016) (defendant used identical marks—motion for summary judgment on this issue unopposed); Bridgestone Brands, LLC v. Dastgah, 2016 WL 1070670, at *4, 2016 BL 84276 (N.D. Cal. Mar. 18, 2016) (noting the identity of the marks, but not formally applying a presumption). See Prudential Ins. Co. of Am. v. Infinity Funding Corp., 2011 WL 13228042, at *5 (C.D. Cal. May 31, 2011) (use of identical marks shows intent to create association). But cf. Chanel, Inc. v. Makarczyk, 110 USPQ2d 2013 (T.T.A.B. 2014) (identical marks, but no invocation of a presumption). E.g., adidas Am., Inc. v. Skechers USA, Inc., 149 F. Supp. 3d 1222, 1247–48 (D. Or. 2016) (detailing evidence supporting application of the factors required for an injunction), aff’d in part, rev’d in part on other grounds, 890 F.3d 747 (9th Cir. 2018). As indicated in §II.D.4, above, parody claims are usually unsuccessful. Courts frequently cite a lack of intent to comment on the famous mark as a reason to reject such claims.See also Chapter 12, §V.B. Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 736 F.3d 198, 207, 108 USPQ2d 1581 (2d Cir. 2013). Swatch AG v. Beehive Wholesale, LLC, 739 F.3d 150, 155, 109 USPQ2d 1291 (4th Cir. 2014). See Chapter 3, §IV.B.1.See, e.g., Lucasfilm Ltd. v. Media Mkt. Grp., Ltd., 182 F. Supp. 2d 897, 900 (N.D. Cal. 2002) (pornographic parody of Star Wars; tarnishing but exempted as noncommercial use under FTDA); Mattel, Inc. v. Internet Dimensions, Inc., 55 USPQ2d 1620 (S.D.N.Y. 2000) (pornographic Internet site); American Express Co. v. Vibra Approved Labs. Corp., 10 USPQ2d 2006 (S.D.N.Y. 1989) (“condom card”); Coca-Cola Co. v. Alma-Leo U.S.A., Inc., 719 F. Supp. 725, 12 USPQ2d 1487 (N.D. Ill. 1989) (candy powder resembling cocaine in bottles resembling Coke bottles). See also Deborah Heart & Lung Ctr. v. Children of the World Found., Ltd., 99 F. Supp. 2d 481, 55 USPQ2d 1088 (D.N.J. 2000) (competing charity foundations); Jews for Jesus v. Brodsky, 993 F. Supp. 282, 46 USPQ2d 1652 (D.N.J.), aff’d, 159 F.3d 1351 (3d Cir. 1998) (critical Web site).E.g., Mattel, 55 USPQ2d at 1627 (pornographic Internet site); Coca-Cola Co., 719 F. Supp. at 728 (candy powder resembling cocaine in bottles resembling Coke bottles).The legitimacy of famous mark owners’ concerns about the potential for tarnishment may be overblown. Some recent empirical evidence casts doubt on whether tarnishment of famous marks is actually a likely outcome. Christo Boshoff, The Lady Doth Protest Too Much: A Neurophysiological Perspective on Brand Tarnishment, 25 J. Prod. & Brand Mgmt. (2016). Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 432, 65 USPQ2d 1801 (2003) (noting that the original FTDA definition of dilution did not clearly encompass tarnishment).Lanham Act §43(c)(2)(C), 15 U.S.C. §1125(c)(2)(C). Whether tarnishment really is a form of dilution could be questioned. The original 1987 USTA proposal to enact a federal dilution statute considered tarnishment to be a different type of claim. The Restatement is somewhat similar to the TDRA, in that it focuses on harm to the reputational values of the mark. Restatement (Third) of Unfair Competition §25(1)(b).Lanham Act §43(c)(3)(A)–(C), 15 U.S.C. §1125(c)(3)(A)–(C). See Chapter 10 for a discussion of the exclusions.See Chapter 3, §IV.B.In this regard, the decision in PNC Fin. Services Group, Inc. v. Plaid, Inc., 2024 WL 3691607, 2024 BL 272248 (W.D. Pa. Aug. 7, 2024) is interesting. There, the court excluded an expert’s opinion about possible tarnishment of plaintiff’s brand, stating that it could confuse the jury regarding the issue of confusion (there was no dilution claim asserted). Id. at *6.See V Secret Catalogue, Inc. v. Moseley, 605 F.3d 382, 95 USPQ2d 1050 (6th Cir. 2010) (imposing a presumption of tarnishment when famous mark is used by another in association with a sexual connotation), cert. denied, 131 S. Ct. 1003 (2011). This decision is discussed in detail below, §II.E.2.a.ii.E.g., Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F. Supp. 2d 1339, 1355 (S.D. Fla. 2001) (use of various domains containing names similar to Victoria’s Secret for Web sites with pornography); Online Partners.com, Inc. v. Atlanticnet Media Corp., 2000 WL 101242, 2000 BL 1434 (N.D. Cal. Jan. 20, 2000), (plaintiff’s Gay.net site tarnished by defendant’s Gaynet.com, which contained pornographic images); Classified Ventures, LLC v. Softcell Mktg., Inc., 109 F. Supp. 2d 898, 901 (N.D. Ill. 2000) (spam e-mails, often touting pornography services, used plaintiff’s cars.com trademark as a domain name for the origination of the e-mail); see Hasbro, Inc. v. Internet Entm’t Group, Ltd., 40 USPQ2d 1479, 1480 (W.D. Wash. 1996) (finding dilution where defendant used candyland.com for pornography services on the Internet, but without using the term “tarnishment”).E.g., Kraft Foods Holdings, Inc. v. Helm, 205 F. Supp. 2d 942, 63 USPQ2d 1353 (N.D. Ill. 2002) (defendant called himself “King VelVeeda” and used that nickname on a Web site offering sexually oriented material).Lanham Act §43(c)(2)(C), 15 U.S.C. §1125(c)(2)(C).See id. §43(c)(1), 15 U.S.C. §1125(c)(1).The store was initially named Victor’s Secret, but was changed when Victoria’s Secret objected.Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 65 USPQ2d 1801 (2003).605 F.3d 382, 95 USPQ2d 1050 (6th Cir. 2010), cert. denied, 131 S. Ct. 1003 (2011).The court also called it a “strong inference,” id. at 389, but in view of the burden-shifting effect mandated by the court, it seems more logical to call it a presumption. On the other hand, Judge Gibbons’ concurring opinion may make the court’s approach something less than a burden-shifting presumption. See id. at 390 (Gibbons, J., concurring).Id. at 388. This appears to be a burden of production-shifting presumption, rather than a burden of persuasion-shifting presumption.Id. at 387–88. The quotation is from the court, not the Restatement. The Restatement is discussed in Chapters 1, 2, and 5.Id. at 388.See L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 1 USPQ2d 1753 (1st Cir.1987); Playboy Enters., Inc. v. Webbworld, Inc., 991 F. Supp. 543, 559, 45 USPQ2d 1641 (N.D. Tex. 1997), aff’d, 168 F.3d 486 (5th Cir. 1999); Playboy Enters., Inc. v. Netscape Commc’ns Corp., 55 F. Supp. 2d 1070, 1089, 52 USPQ2d 1162 (C.D. Cal.), aff’d mem., 202 F.3d 278 (9th Cir. 1999).605 F.3d at 387 (quoting House Judiciary Report, 109th Cong. (2d Sess. 2006), reprinted in U.S.C.C.A.N. 1091, 1092, 1097).Id. at 390 (Gibbons, J., concurring).See Fed. R. Evid. 301; Charles A. Wright & Kenneth W. Graham, Jr., 21B Fed. Prac. & Proc. Evid. §5126 (2d ed.) (discussing the effect of presumptions under Rule 301).605 F.3d at 391 & n.2 (Moore, J., dissenting).Id. at 392 (citing Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 110, 92 USPQ2d 1769 (2d Cir. 2009)).Id. at 392–94. The affidavit of the Army colonel is reproduced in Appendix D.Id. at 394 & n.4.Gathering Spot, LLC v. Gathering Spot at Burlington Village LLC, 2023 WL 11897502, at *5, 2023 BL 504197 (E.D. Tenn. Aug. 29, 2023) (finding defendant’s use of the social media handle GSpot for its services satisfied the presumption).Id. at 389.See 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §23:2 (4th ed. 2011) (citing cases indicating that 15% or even 8.5% may be considered significant levels of confusion).Christopher Buccafusco et al., Testing Tarnishment in Trademark and Copyright Law: The Effect of Pornographic Versions of Protected Marks and Works, 94 Wash. U. L. Rev. 341 (2016). 582 U.S. 218 (2017). 588 U.S. 388 (2019).See Tam, 582 U.S. at 246 (“[The ban on disparaging marks] is not an anti-discrimination clause; it is a happy-talk clause. In this way, it goes much further than is necessary to serve the interest asserted.”) (opinion of Alito, J.); id. at 248–250 (Kennedy, J., concurring) (“At its most basic, the test for viewpoint discrimination is whether—within the relevant subject category—the government has singled out a subset of messages for disfavor based on the views expressed. … The First Amendment’s viewpoint neutrality principle protects more than the right to identify with a particular side. It protects the right to create and present arguments for particular positions in particular ways, as the speaker chooses. By mandating positivity, the law here might silence dissent and distort the marketplace of ideas. … The Government may not insulate a law from charges of viewpoint discrimination by tying censorship to the reaction of the speaker’s audience.”). Brunetti, 588 U.S. at 394–95.605 F.3d at 386–87.537 U.S. at 432; see id. at 430 (noting that older state laws expressly include claims for tarnishment). The Court noted that the Sixth Circuit affirmed both blurring and tarnishment claims. Id. at 432.Id. at 434.E.g., Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F. Supp. 2d 1339, 1355 (S.D. Fla. 2001) (use of various domains containing names similar to Victoria’s Secret for Web sites with pornography); Online Partners.com, Inc. v. Atlanticnet Media Corp., 2000 WL 101242, 2000 BL 1434 (N.D. Cal. Jan. 20, 2000) (plaintiff’s gay.net site tarnished by defendant’s gaynet.com, which contained pornographic images); Classified Ventures, LLC v. Softcell Marketing, Inc., 109 F. Supp. 2d 898, 901 (N.D. Ill. 2000) (spam e-mails, often touting pornography services, used plaintiff’s cars.com trademark as a domain name for the origination of the e-mail); see Hasbro, Inc. v. Internet Entm’t Group, Ltd., 40 USPQ2d 1479, 1480 (W.D. Wash. 1996) (finding dilution where defendant used candyland.com for pornography services on the Internet, but without using the term “tarnishment”).E.g., Southeastern La. Entm’t v. Hollywood Entm’t Corp., 56 USPQ2d 1688, 1692 (E.D. La. 2000) (Hollywood Video tarnished by Hollywood Connexxion, which distributes adult videos). See V Secret Catalogue, Inc. v. Moseley, 259 F.3d 464, 477 (6th Cir. 2001) (calling it “a classic instance of dilution by tarnishing (associating the Victoria’s Secret name with sex toys and lewd coffee mugs) and blurring”), rev’d on other grounds, 418 U.S. 537 (2003).See Playboy Enters., Inc. v. Webbworld, Inc., 991 F. Supp. 543, 559, 45 USPQ2d 1641 (N.D. Tex. 1997), aff’d, 168 F.3d 486 (5th Cir. 1999); Playboy Enters., Inc. v. Netscape Commc’ns Corp., 55 F. Supp. 2d 1070, 1089, 52 USPQ2d 1162 (C.D. Cal.), aff’d mem., 202 F.3d 278 (9th Cir. 1999). Catalogue merchant L.L. Bean lost a dilution claim under state law brought against a parody that associated L.L. Bean with sexually oriented products. L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 1 USPQ2d 1753 (1st Cir. 1987).Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. B.E. Windows Corp., 937 F. Supp. 204, 211 (S.D.N.Y. 1996).605 F.3d 382, 95 USPQ2d 1050 (6th Cir. 2010), cert. denied, 562 U.S. 1179 (2011).Id. at 390.558 F. Supp. 2d 734, 87 USPQ2d 1240 (W.D. Ky. 2008), aff’d, 605 F.3d 382, 95 USPQ2d 1050 (6th Cir. 2010), cert. denied, 562 U.S. 1179 (2011). The case sat in the Sixth Circuit for four years before that court remanded to the district court. The district court then applied the TDRA to the blurring and tarnishment claims.Id. at 750. The dissenting judge in the Sixth Circuit also noted that the context of the case might well preclude a tarnishment claim. 605 F.3d at 394 & n.4 (Moore, J., dissenting).605 F. 3d at 388–89. The Sixth Circuit’s opinion is discussed in greater detail above §II.E.2.ii.Pfizer, Inc. v. Sachs, 652 F. Supp. 2d 512, 525, 92 USPQ2d 1835 (S.D.N.Y. 2009).Id. at 525.886 F. Supp. 2d 529, 105 USPQ2d 1230 (E.D. Va. 2012). Id. at 537. 2012 U.S. Dist. LEXIS 163851 (E.D. Va. July 12, 2012). Id. at *29. American Dairy Queen Corp. v. New Line Prods., Inc., 35 F. Supp. 2d 727, 733 (D. Minn. 1998).Id. at 728–29.Id. at 733–34.America Online, Inc. v. IMS, 24 F. Supp. 2d 548, 552, 48 USPQ2d 1857 (E.D. Va. 1998).America Online, Inc. v. LGCM, Inc., 46 F. Supp. 2d 444, 448 (E.D. Va. 1998). See Hotmail Corp. v. Van$ Money Pie, Inc., 47 USPQ2d 1020, 1026 (N.D. Cal. 1998).Lucasfilm Ltd. v. Media Mkt. Group, Ltd., 182 F. Supp. 2d 897, 900 (N.D. Cal. 2002) (parody of Star Wars). The noncommercial use exclusion is discussed in Chapter 10, §IV. It might also be a “fair use” as a parody under §43(c)(3)(A)(ii), but most courts probably would deem such a use to be “unfair.”94 F. Supp. 2d 566 (E.D. Pa. 1999).Id. at 572.Id.79 F. Supp. 2d 331 (S.D.N.Y. 1999).Id. at 346.Id.2024 WL 5423045, 2024 BL 489268 (D.P.R. Jan. 25, 2024).Id. at *9.704 F. Supp. 2d 305, 95 USPQ2d 1451 (S.D.N.Y. 2010).Id. at 323. See also New York Times Co. v. Microsoft Corp., 2025 WL 1009179, at *25, 2025 BL 114980 (S.D.N.Y. Apr. 4, 2025), where the court, in the course of denying a motion to dismiss based on a lack of fame, indicated that the plaintiff newspapers had asserted a tarnishment claim by alleging that defendant’s artificial intelligence engine diluted their trademarks by incorrectly identifying certain “low quality writing” as attributable to the plaintiffs.2016 WL 8223436, 2016 BL 491146 (E.D. Va. Apr. 8, 2016). Id. at *7. 744 F. Supp. 3d 894 (D. Minn. 2024).Id. at 905.328 F. Supp. 3d 1007 (N.D. Cal. 2018).Id. at 1024.203 F.3d 596 (9th Cir.), cert. denied, 531 U.S. 871 (2000).Id. at 609.Id. at 608–09. The court appeared skeptical that poor quality alone could even support a tarnishment claim. Id. at 609.2010 WL 900525, 2010 BL 399404 (S.D. Fla. Mar. 11, 2010).Id. at *3.2013 U.S. Dist. LEXIS 41810 (W.D. Wash. Mar. 25, 2013). Id. at *36–39. 2015 WL 7283176, 2015 BL 377863 (N.D. Ind. Nov. 17, 2015). Id. at *1–2, 4. 2017 U.S. Dist. LEXIS 17576, 2017 WL 510896, 2017 BL 38164 (N.D. Ga. Feb. 8, 2017). Id. at *15–19. Accord Eleutian Tech., Inc. v. Ellucian Co., 2017 U.S. Dist. LEXIS 25589, at *17–21 (D. Utah Feb. 21, 2017) (dismissing allegations of tarnishment as conclusory, but with leave to amend). 588 F.3d 97, 92 USPQ2d 1769 (2d Cir. 2009).Id. at 111.10 F. Supp. 2d 271, 47 USPQ2d 1558 (S.D.N.Y. 1998).Id. at 287–89. Both parties used service marks whose key term was “Lexington.” See also Kellogg Co. v. Exxon Mobil Corp., 192 F. Supp. 2d 790, 809-11 59 USPQ2d 1551 (W.D. Tenn. 2001) (rejecting state law tarnishment claim that association of Exxon’s cartoon tiger with oil company would tarnish Kellogg’s Tony the Tiger mark). Cf. Motorsport Eng’g, Inc. v. Maserati, S.P.A., 183 F. Supp. 2d 209, 227 (D. Mass. 2001) (denying summary judgment on tarnishment claim for lack of evidence where plaintiff continued to hold self out as Maserati dealer after franchise expired), aff’d, 316 F.3d 26 (1st Cir. 2002) (the court of appeals did not discuss the tarnishment claim).61 F. Supp. 2d 700 (N.D. Ohio 1999).Id. at 718.129 F. Supp. 2d 254 (S.D.N.Y. 2001).Id. at 257.Id.267 F. Supp. 2d 1268, 1332–33 (S.D. Fla. 2003).E.g., 7-Eleven, Inc. v. McEvoy, 300 F. Supp. 2d 352, 357 (D. Md. 2004) (terminated franchisee).Food Market Merch., Inc. v. California Milk Processing Bd., 2020 WL 2194013, at *8, 2020 BL 170383 (E.D. Cal. May 6, 2020) (dismissing a counterclaim).Id. Cf. Hallmark Licensing LLC v. Dickens, Inc., No. CV 17-2149 (SJF)(AYS), 2020 WL 1914762, at *10 (E.D.N.Y. Feb. 28, 2020) (finding blurring through distribution of outdated greeting cards).E.g., Nike Inc. v. Variety Wholesalers, Inc., 274 F. Supp. 2d 1352, 1372 (S.D. Ga. 2003) (counterfeit goods); Scott Fetzer Co. v. Gehring, 288 F. Supp. 2d 696, 701–02 (E.D. Pa. 2003) (sale of genuine goods in an unauthorized manner); Perkins Sch. for the Blind v. Maxi-Aids, Inc., 274 F. Supp. 2d 319, 325–26, 69 USPQ2d 1932 (E.D.N.Y. 2003) (gray market goods with substituted warranty). As seen by these cases, this was true even under the actual dilution standard enunciated in Moseley v. V Secret Catalogue, Inc. See H-D U.S.A. LLC v. Square Wear, LLC, 2020 WL1821023 (E.D. Mich. Apr. 10, 2020) (sale of merchandise with Harley-Davidson marks). See Fossil Grp., Inc. v. Angel Seller LLC, 2025 WL 1031062, at *7, 2025 BL 117060 (E.D.N.Y. Apr. 7, 2025) (denying motion for summary judgment on the issue of tarnishment, the court apparently assumed that selling counterfeit goods would be tarnishing, but found an issue of fact as to whether the goods were counterfeit). See also 3M Co. v. Ugly Juice, LLC, 2021 WL 1947579, at *5, 2021 BL 180088 (N.D. Cal. May 14, 2021) (granting preliminary injunction for dilution based on counterfeit goods, without specifying whether blurring or dilution).Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 434, 65 USPQ2d 1801 (2003). This standard has been alluded to even after the TDRA instituted a likelihood-of-dilution standard. Visa Int’l Serv. Ass’n v. JSL Corp., 610 F.3d 1088, 1090, 95 USPQ2d 1571 (9th Cir. 2010). Obviously, if there is actual dilution, then there is also a likelihood of dilution.In other words, the public is confused. If consumers are not confused, then the poor quality of the goods should not be seen as a reflection on the famous mark owner.381 F.3d 477, 72 USPQ2d 1011 (5th Cir. 2004).Id. at 489–90. See Food Mkt. Merch., Inc. v. California Milk Processor Bd., 2018 WL 2540323, at *11, 2018 BL 192998 (E.D. Cal. May 31, 2018) (dismissing complaint of tarnishment based on sales of genuine, but outdated, branded goods); John Paul Mitchell Sys. v. Randalls Food Mkts., Inc., 17 S.W.3d 721, 736–37 (Tex. App. 2000) (sales of plaintiff’s genuine goods not actionable as dilution under Texas law).2013 WL 12064859 (S.D. Fla. Nov. 13, 2013). Id. at *1–2. Id. at *6. See Animacord Ltd. v. Individuals P’ships and Unincorp’d Assns. Identified on Schedule “A”, 2023 WL 6206452, at *13, 2023 BL 314156 (E.D. Va. Feb. 28, 2023) (allegations of selling counterfeit goods not sufficient for tarnishment where no showing that goods were of inferior quality; but allegations sufficed for blurring); Brain Pharma, LLC v. Scalini, 858 F. Supp. 2d 1349, 1358 (S.D. Fla. 2012). Hilton Worldwide, Inc. v. Global Advert., Inc., 2016 WL 8223436, at *7, 2016 BL 491146 (E.D. Va. Apr. 8, 2016). See American Airlines, Inc. v. Shahi World & Travels LLC, 2023 WL 3952332, at *17, 2023 BL 200049 (E.D. Va. June 12, 2023) (plaintiff sufficiently pled tarnishment claim); Advance Magazine Publishers, Inc. v. Tinsley, 2019 WL 1285089, at *3, 2019 BL 95194 (E.D. Mich. Mar. 20, 2019) (default judgment; defendant used plaintiff’s marks in her domain names and falsely represented herself as a writer for plaintiff’s publications—court found this to satisfy tarnishment).Microsoft Corp. v. Does 1-2, 2018 WL 6186826, at *8, 2018 BL 438344 (E.D. Va. Oct. 31, 2018).500 F. Supp. 2d 296 (S.D.N.Y. 2007).Id. at 312. The court also noted that the Second Circuit takes a “‘broad view of tarnishment.’” Id. at 308 (quoting Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 507 (2d Cir. 1996)).In the European Union, a claim in this situation could be brought under a provision that imposes liability for using an identical mark on identical goods without any requirement of confusion. See, e.g., Council Regulation (EC) No. 40/941 of 20 December 1993 on the Community trade mark, Art. 9(1)(a). This and other similar provisions are discussed in Chapter 15.E.g., H-D USA LLC v. Mayo, 2016 WL 7839144, at *2, 2016 BL 446732 (E.D. Wis. June 10, 2016) (unopposed motion for summary judgment); Otter Prods., LLC v. Berrios, 2013 U.S. Dist. LEXIS 147139, at *18 (C.D. Cal. Oct. 10, 2013); Burberry Ltd. v. Designers Imports, Inc., 2010 U.S. Dist. LEXIS 3605, at *20 (S.D.N.Y. Jan. 19, 2010); Farouk Sys., Inc. v. Parmar, 2008 U.S. Dist. LEXIS 62920, at *6 (S.D. Tex. Aug. 14, 2008) (citing defendant’s “inferior” product); Pepsico, Inc. v. Irie Motivations, Inc., 2008 U.S. Dist. LEXIS 108025 (C.D. Cal. 2008) (did not specify whether blurring or tarnishment); Diane von Furstenberg Studio v. Snyder, 2007 U.S. Dist. LEXIS 66633, at *9–11 (E.D. Va. 2007). Cf. Bentley Motors Corp. v. McEntegart, 976 F. Supp. 2d 1297, 1313–14 (M.D. Fla. 2013) (use on kit cars; court did not clearly identify whether blurring or tarnishment).Lanham Act §§43(c)(3)(A)(ii), (c)(3)(C), 15 U.S.C. §§1125(c)(3)(A)(ii), (c)(3)(C).See Chapter 10, §§II.C and IV.E.g., Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 63 USPQ2d 1715 (9th Cir. 2002), cert. denied, 537 U.S. 1171 (2003); Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302, 1339–40 (N.D. Ga. 2008); Lucasfilm Ltd. v. Media Mkt. Group, Ltd., 182 F. Supp. 2d 897, 900 (N.D. Cal. 2002); Ford Motor Co. v. 2600 Enters., 177 F. Supp. 2d 661, 664–65, 61 USPQ2d 1757 (E.D. Mich. 2001); Northland Ins. Cos. v. Blaylock, 115 F. Supp. 2d 1108, 1123, 56 USPQ2d 1662 (D. Minn. 2000); Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161, 1167, 50 USPQ2d 1840 (C.D. Cal. 1998).141 Cong. Rec. H14,318 (remarks of Rep. Moorhead) (Dec. 12, 1995). The addition of parody and commentary to the “fair use” exclusion under the TDRA reinforces this conclusion.582 U.S. 218 (2017). 588 U.S. 388 (2019).The possible effect of Tam and Brunetti on federal tarnishment claims is discussed more fully in §II.E.3, below, and in Chapter 10. It should be noted that these cases may now be brought more easily under the Anticybersquatting Consumer Protection Act (ACPA). E.g., E & J Gallo Winery v. Spider Webs Ltd., 129 F. Supp. 2d 1033, 1045 (S.D. Tex. 2001) (finding liability under the ACPA for use of earnestandjuliogallo.com for a Web site critical of Gallo), aff’d, 286 F.3d 270, 62 USPQ2d 1404 (5th Cir. 2002). See Chapter 14 for a discussion of the ACPA.993 F. Supp. 282, 46 USPQ2d 1652 (D.N.J.), aff’d mem., 159 F.3d 1351 (3d Cir. 1998).Id. at 307. See also Planned Parenthood Fed’n of Am., Inc. v. Bucci, 42 USPQ2d 1430 (S.D.N.Y. 1997), aff’d, 152 F.3d 920 (2d Cir.), cert. denied, 525 U.S. 834 (1998) (antiabortion site using plannedparenthood.com domain name found diluting, though largely on confusion grounds). Cf. People for the Ethical Treatment of Animals, Inc. v. Doughney, 113 F. Supp. 2d 915, 920 (E.D. Va. 2000) (finding dilution by blurring from defendant’s peta.org Web site, which featured material antithetical to the plaintiff organization’s beliefs), aff’d on other grounds, 263 F.3d 359, 60 USPQ2d 1109 (4th Cir. 2001) (affirmed on ACPA grounds).205 F. Supp. 2d 942, 63 USPQ2d 1353 (N.D. Ill. 2002).Id. at 954–55. For a discussion of the noncommercial use exclusion under the FTDA, see Chapter 10, §IV. Although the TDRA added a fair use exclusion specifically aimed at parody and commentary, the use on a sexually explicit Web site probably would not be considered a “fair use.” See Chapter 10, §II.29 F. Supp. 2d 1161, 50 USPQ2d 1840 (C.D. Cal. 1998).The site did not use Bally as part of the domain name address. Id. at 1167–68.Id. See Ford Motor Co. v. 2600 Enters., 177 F. Supp. 2d 661, 665, 61 USPQ2d 1757 (E.D. Mich. 2001) (defendant’s “fuckgeneralmotors.com” site, which provided automatic link to plaintiff’s “ford.com” site, held exempt).University of Kansas v. Sinks, 644 F. Supp. 2d 1287, 1294 (D. Kan. 2008). The court cited two pieces of testimony—one by a university employee and one concerning an Internet blog.652 F. Supp. 2d 512, 92 USPQ2d 1835 (S.D.N.Y. 2009).Id. at 525.See §II.E.2.a, above, for a discussion of tarnishment in sexually oriented situations.Radiance Found., Inc. v. NAACP, 25 F. Supp. 3d 865, 895–96, 111 USPQ2d 1863 (E.D. Va. 2014), vacated and remanded, 786 F.3d 316, 114 USPQ2d 1772 (4th Cir. 2015). 786 F.3d 316, 114 USPQ2d 1772 (4th Cir. 2015). Id. at 330. Id. at 331–32. See Chapter 10 for a discussion of the statutory exclusions. 291 F. Supp. 3d 891 (D. Ariz. 2018), rev’d, 953 F.3d 1170 (9th Cir. 2020), rev’d, 599 U.S. 140 (2023) (finding the noncommercial use exclusion not applicable). Id. at 898. Id. at 901–05. On appeal, the Ninth Circuit found that this constituted a noncommercial use and reversed the finding of dilution. 953 F.3d 1170, 1176 (9th Cir. 2020). The court of appeals also vacated and remanded the district court’s finding of infringement by confusion on the grounds that Rogers v. Grimaldi provided a defense to infringement. However, the Supreme Court reversed the Ninth Circuit, finding Rogers inapplicable where the offending use was as a trademark, and also found the noncommercial use exclusion inapplicable when the use was as a trademark. 599 U.S. 140 (2023). The case was remanded to the district court, which again found dilution by tarnishment. 2025 WL 275909, at *19, 2025 BL 21521 (D. Ariz. Jan. 21, 2025). The Supreme Court’s decision is discussed in Chapter 10, Section IV.D.1. 14 F. Supp. 2d 947, 48 USPQ2d 1759 (N.D. Tex. 1998), aff’d, 179 F.3d 384, 51 USPQ2d 1365 (5th Cir. 1999).Id. at 951.Id. at 954.221 F. Supp. 2d 410 (S.D.N.Y. 2002).Id. at 422–23. Quoting the Ninth Circuit, the plaintiff was “‘advised to chill.’” Id. at 425 (quoting Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 908, 63 USPQ2d 1715 (9th Cir. 2002), cert. denied, 537 U.S. 1171 (2003)).507 F.3d 252, 84 USPQ2d 1969 (4th Cir. 2007).177 F. Supp. 2d 661, 61 USPQ2d 1757 (E.D. Mich. 2001).Id. at 664.Id. The court also found the use to be protected by the noncommercial use exemption. Id. at 664–65.28 F. Supp. 2d 1120 (C.D. Cal. 1998), aff’d, 296 F.3d 894, 63 USPQ2d 1715 (9th Cir. 2002), cert. denied, 537 U.S. 1171 (2003). The Ninth Circuit found this to be a noncommercial use. See Chapter 10, §IV.Id. at 1156. See id. at 1125 (describing the song “Barbie Girl”).See id. at 1156.Id. at 1155.Id. at 1156 (quoting L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 33, 1 USPQ2d 1753 (1st Cir.), cert. denied, 483 U.S. 1013 (1987)).Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 65 USPQ2d 1801 (2003).287 F. Supp. 2d 913, 68 USPQ2d 1461 (C.D. Ill. 2003).Id. at 922.286 F. Supp. 2d 1254, 68 USPQ2d 1841 (N.D. Cal. 2003).The court found that the depiction neither lessened the source-identifying capacity of the mark nor caused people to make unfavorable associations with the mark. Id. at 1261. See also GTFM, LLC v. Universal Studios, Inc., 79 USPQ2d 1213, 1216 (S.D.N.Y. 2006) (no tarnishment from use of parody of FUBU mark); Playmakers, LLC v. ESPN, Inc., 297 F. Supp. 2d 1277, 69 USPQ2d 1439 (W.D. Wash. 2003) (rejecting claim by sports agency that the “Playmakers” television series tarnished its Playmakers mark, on the grounds that the plaintiff’s mark was not sufficiently strong to merit dilution protection), aff’d, 376 F.3d 894, 71 USPQ2d 1759 (9th Cir. 2004) (no ruling on dilution).280 F. Supp. 2d 413 (W.D. Pa. 2003).Id. at 443.For a discussion of these exclusions under §43(c)(3), see Chapter 10, §§II and IV.507 F.3d 252, 267, 84 USPQ2d 1969 (4th Cir. 2007).Id. at 268–69.666 F. Supp. 2d 974 (E.D. Mo. 2008).Id. at 987–88.2013 U.S. Dist. LEXIS 113465 (S.D.N.Y. Aug. 12, 2013). Id. at *8–10. See §IV, below, for a discussion of the need for defendant to make use of the mark as defendant’s trademark in order to constitute dilution. See, e.g., Louis Vuitton Malletier, S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 267, 84 USPQ2d 1969 (4th Cir. 2007); Lyons P’ship v. Giannoulas, 14 F. Supp. 2d 947, 954, 48 USPQ2d 1759 (N.D. Tex. 1998), aff’d, 179 F.3d 384, 51 USPQ2d 1365 (5th Cir. 1999); Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 506, 37 USPQ2d 1516 (2d Cir. 1996); Jordache Enters., Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1490, 4 USPQ2d 1216 (10th Cir. 1987).See Deere & Co. v. MTD Prods., Inc., 41 F.3d 39, 32 USPQ2d 1936 (2d Cir. 1994). Actually, the Deere opinion stated that it was not basing its holding on a tarnishment theory. Id. at 44 (“Nor is there tarnishment. …”). However, the Second Circuit later reinterpreted Deere as “better understood as a recognition of a broad view of tarnishment.” Hormel Foods, 73 F.3d at 507.Restatement (Third) of Unfair Competition §25, cmt. i (“extension of the antidilution statutes to protect against damaging nontrademark uses raises substantial free speech issues and duplicates other potential remedies better suited to balance the relevant interests”).Unlike New York law, the TDRA contains a specific exclusion from dilution protection for any “[f]air use … of a famous mark … in connection with … advertising or promotion that permits consumers to compare goods or services.” Lanham Act §43(c)(3)(A)(i), 15 U.S.C. §1125(c)(3)(A)(i). It may also be that the exclusion would prevent any liability in such a case. The “fair use” exclusion is discussed more fully in Chapter 10, §II.See Chapter 3, §IV.B.5. But cf. V Secret Catalogue, Inc. v. Moseley, 605 F.3d 382, 388–89 (6th Cir. 2010), cert. denied, 131 S. Ct. 1003 (2011) (presumption of tarnishment in sexually oriented use cases).The United States Trademark Association Trademark Review Commission Report and Recommendations to USTA President and Board of Directors, 77 Trademark Rep. 375, 434 (1987).221 F. Supp. 2d 410 (S.D.N.Y. 2002).Id. at 423. The court noted that the two parties were not competitors, and found the defendant’s parody to be essentially harmless. Moreover, there was no evidence that defendant’s product was of low quality.507 F.3d 252, 84 USPQ2d 1969 (4th Cir. 2007).Id. at 269. But cf. Radiance Found., Inc. v. NAACP, 25 F. Supp. 3d 865, 895–96, 111 USPQ2d 1863 (E.D. Va. 2014) (crediting a survey as evidence of tarnishment by party’s use of “National Association for the Abortion of Colored People”), vacated and remanded, 786 F.3d 316, 114 USPQ2d 1772 (4th Cir. 2015) (reversing on grounds of fair use and noncommercial use).559 F. Supp. 2d 472, 88 USPQ2d 1268 (S.D.N.Y. 2008), aff’d in part, rev’d in part on other grounds, 588 F.3d 97, 110–11, 92 USPQ2d 1769 (2d Cir. 2009) (affirming district court’s ruling of lack of tarnishment).Id. at 480. See Anheuser-Busch, Inc. v. VIP Prods., LLC, 666 F. Supp. 2d 974, 987–88 (E.D. Mo. 2008) (rejecting tarnishment claim, citing lack of evidence of harm to reputation).582 U.S. 218 (2017). 588 U.S. 388 (2019). The entire Court agreed that trademark registration did not constitute government speech. See Tam, 582 U.S. at 234–39 (opinion of the Court). However, the Justices split on the parameters of viewpoint discrimination, and they disagreed about how, and whether, to test trademark registration under the Court’s commercial speech doctrine. Compare id. at 244–47 (disparagement ban fails under commercial speech analysis), with id. at 252 (Kennedy, J., concurring) (without deciding whether trademarks are commercial speech, viewpoint neutrality is still required under commercial speech doctrine). Id. at 223. Id. at 250, 253–54 (Kennedy, J., concurring). Brunetti, 588 U.S. at 394–95. Three Justices dissented in part, arguing that, although the ban on “immoral” marks violated the First Amendment, the ban on “scandalous” marks was capable of a narrowing interpretation—namely, one that limited it to marks that were vulgar and the manner of the marks presented did not intertwine with the idea presented. Brunetti, 588 U.S. at 401 (Roberts, C.J., concurring in part and dissenting in part); id. at 409 (Sotomayor, concurring in part and dissenting in part); id. at 406–08 (Breyer, J., concurring in part and dissenting in part). Justice Breyer reiterated his view, expressed elsewhere, that the categorical approach to First Amendment analysis should be changed. See id. at 403–05.Brunetti, 588 U.S. at 395–96.644 F. Supp. 2d 1287 (D. Kan. 2008). See Jordache Enters., Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 4 USPQ2d 1216 (10th Cir. 1987). If tarnishment is regarded as viewpoint-neutral, then the Court is less likely to interfere with its application. See generally Vidal v. Elster, 602 U.S. 286 (2024).This may be particularly true in proceedings in the PTO, where dilution is used to preclude registration, which the Court may view as reasonably analogous to the situations in Tam and Brunetti. On the other hand, particularly in registration situations, the Court may be reluctant to impose strict scrutiny unless the regulation is regarded as viewpoint-based. See generally Vidal v. Elster, 602 U.S. 286 (2024). Matal v. Tam, 582 U.S. 218, 253 (2017) (Kennedy, J. concurring). Id. at 252. 483 U.S. 522, 3 USPQ2d 1145 (1987). See Vidal v. Elster, 602 U.S. 286, 306–07 (2024) (“we have recognized that a party has no First Amendment right to piggyback off the goodwill another entity has built in its name”—citing and discussing SFAA).E.g., Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 494–95, 212 USPQ 246 (1st Cir. 1981); James Burrough Ltd., v. Sign of Beefeater, Inc., 540 F.2d 266, 274 n.16, 192 USPQ 555 (7th Cir. 1976); Bellsouth Corp. v. Internet Classifieds of Ohio, 1997 WL 33107251, at *23 (N.D. Ga. Nov. 12, 1997) (“a showing of likelihood of confusion is sufficient to demonstrate the dilution of a trademark”); Key3Media Events, Inc. v. Convention Connection, Inc., 2002 WL 385546, at *3–4 (D. Nev. Jan. 25, 2002) (finding dilution but only discussing confusion); CSC Brands, L.P. v. Herdez Corp., 191 F. Supp. 2d 1145, 1153 (E.D. Cal. 2001); General Motors Corp. v. E-Publications, LLC, 2001 WL 1798648 at *4 (E.D. Mich. Nov. 26, 2001) (finding dilution with only a discussion of confusion); Blaich Assocs., Inc. v. Coach/Blaich Real Estate of Manhasset, Inc., 719 N.Y.S.2d 820, 822 (Sup. Ct. Nassau Co. 2000); Southeastern La. Entm’t v. Hollywood Entm’t Corp., 56 USPQ2d 1688, 1691 (E.D. La. 2000) (FTDA case: stipulation of confusion ends dilution inquiry); Sherwood Ford, Inc. v. Ford Motor Co., 875 F. Supp. 590, 594 (E.D. Mo. 1995) (same set of facts demonstrates both confusion and dilution); Philip Morris, Inc. v. Star Tobacco Corp., 879 F. Supp. 379, 389, 35 USPQ2d 1178 (S.D.N.Y. 1995); Nelson/Weather-Rite, Inc. v. Leatherman Tool Group, Inc., 40 USPQ2d 1239, 1244 (N.D. Ill. 1995) (“a trade dress that is likely to confuse is necessarily one that is likely to dilute”); Saks & Co. v. Hill, 843 F. Supp. 620, 624, 29 USPQ2d 1941 (S.D. Cal. 1993); Emerson Elec. Co. v. Emerson Quiet Kool Corp., 577 F. Supp. 668, 679, 221 USPQ 782 (E.D. Mo. 1983) (confusion constitutes dilution); Tri-Star Pictures, Inc. v. Unger, 14 F. Supp. 2d 339, 363 (S.D.N.Y. 1998); Babbit Elecs., Inc. v. Dynascan Corp., 38 F.3d 1161, 1182, 33 USPQ2d 1001 (11th Cir. 1994); Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 15 F. Supp. 2d 389, 400 (S.D.N.Y. 1998), aff’d, 192 F.3d 337, 52 USPQ2d 1094 (2d Cir. 1999); Kraft Gen. Foods, Inc. v. Allied Old English, Inc., 831 F. Supp. 123, 134, 31 USPQ2d 1094 (S.D.N.Y. 1993); Skil Corp. v. Barnet, 150 N.E.2d 551, 555, 117 USPQ 461 (Sup. Jud. Ct. Mass. 1958) (“any possibility that the defendant may confuse the public as to the source of the goods sold by him may be given consideration”). See also Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 59 USPQ2d 1894 (11th Cir. 2001) (district court enjoined dilution under Florida law and the court of appeals apparently affirmed a dilution injunction, though it only discussed confusion). But see AutoZone, Inc. v. Tandy Corp., 373 F.3d 786, 71 USPQ2d 1385 (9th Cir. 2004) (finding confusion to be “irrelevant” to dilution); Star Mkts., Ltd. v. Texaco, Inc., 950 F. Supp. 1030, 1037 (D. Haw. 1996) (“a finding of trademark dilution does not necessarily flow from a finding of trademark infringement”). Some courts have cited the existence of infringement by confusion as a reason to avoid a ruling on a dilution claim. E.g., E. Remy Martin & Co., S.A. v. Shaw-Ross Int’l Imps., Inc., 756 F.2d 1525, 1534, 225 USPQ 1131 (11th Cir. 1985); Quabaug Rubber Co. v. Fabiano Shoe Co., 567 F.2d 154, 161 n.14, 195 USPQ 689 (1st Cir. 1977); Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366, 389, 188 USPQ 623 (7th Cir.), cert. denied, 429 U.S. 830, 191 USPQ 416 (1976); President & Trs. of Colby Coll. v. Colby College-New Hampshire, 508 F.2d 804, 808 n.4, 185 USPQ 65 (1st Cir. 1975); OBH, Inc. v. Spotlight Magazine, Inc., 86 F. Supp. 2d 176, 197 n.12, 54 USPQ2d 1383 (W.D.N.Y. 2000); Nature’s Bounty, Inc. v. Superx Drugs Corp., 490 F. Supp. 50, 55 n.6, 207 USPQ 263 (E.D.N.Y. 1980).See CareFirst of Md., Inc. v. First Care, P.C., 434 F.3d 263, 274, 77 USPQ2d 1577 (4th Cir. 2006) (confusion survey is not evidence of dilution); Louis Vuitton Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558, 597 (S.D.N.Y. 2007) (rejecting a survey on the grounds that it showed confusion but not blurring); Alberto-Culver Co. v. Trevive, Inc., 199 F. Supp. 2d 1004, 1006 n.3 (C.D. Cal. 2002) (“[l]ikelihood of confusion is irrelevant to trademark dilution claims under 15 U.S.C. §1125(c) and Cal. Bus. & Prof. Code §§14330”) (citations omitted) (magistrate judge opinion). See also NCR Corp. v. ATM Exch., Inc., 2006 U.S. Dist. LEXIS 30296, at *9 n.1 (S.D. Ohio May 17, 2006). But see Montana Prof’l Sports, LLC v. Leisure Sports Mgmt., Inc., 422 F. Supp. 2d 1271 (M.D. Fla. 2006) (citing confusion as basis for dilution). Under the original FTDA definition of dilution—lessening the capacity of a famous mark to serve as a source identifier—a similar analysis would result in the same conclusion.This has been called the mark’s “brand equity” by one commentator. Steve Hartman, Brand Equity Impairment—The Meaning of Dilution, 87 Trademark Rep. 418 (1997).Interestingly, the dilution bill passed by the Senate in 1988 defined dilution as “the material reduction of the distinctive quality of a famous mark.” S. Rep. No. 100-515, 100th Cong., 2d Sess. 22 (Sept. 15, 1988) (quoting S. 1883 §38, definition of dilution). If that provision had become law, the interpretive issue would have been less problematic.See Patrick M. Bible, Defining and Quantifying Dilution Under the Federal Trademark Dilution Act of 1995: Using Survey Evidence to Show Actual Dilution, 70 U. Colo. L. Rev. 295, 329 (1999) (suggesting measuring dilution by measuring “a reduction in a brand’s ‘typicality’ or its ‘ability to conjure up a particular category’”) (citation omitted). See also Alexander F. Simonson, Dilution Law: At a Crossroad? How and When Do Trademarks Dilute: A Behavioral Framework to Judge “Likelihood” of Dilution, 83 Trademark Rep. 149, 152–53 (1993) (discussing “typicality” dilution). This interpretation is made a bit less likely by the fact that a famous mark must be recognized by the “general consuming public,” and may not be aimed at a particular product line.See National Van Lines, Inc. v. National Van Lines, Inc., 2013 U.S. Dist. LEXIS 71111, at *15–16 (D. S.C. Mar. 25, 2013) (in a default judgment case, noting that plaintiff’s showing of confusion would cause injury to the mark’s reputation). See §II.B.2, above, for a discussion of legislative history indicating Congress intended that the FTDA cover tarnishment.E.g., Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 65 USPQ2d 1801 (2003).This phenomenon exists under both state and federal law. E.g., Community of Christ Copyright Corp. v. Devon Park Restoration Branch, 634 F.3d 1005, 1010, 98 USPQ2d 1167 (8th Cir. 2011) (Missouri law); Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 494–95, 212 USPQ 246 (1st Cir. 1981); James Burrough Ltd., v. Sign of Beefeater, Inc., 540 F.2d 266, 274 n.16, 192 USPQ 555 (7th Cir. 1976); Marv-A-Les Air Charters, LLC v. Sea Tow Servs. Int’l, Inc., 2009 WL 2988903, at *2 (S.D. Ga. Sep. 17, 2009); Key3Media Events, Inc. v. Convention Connection, Inc., 2002 WL 385546, at *3–4 (D. Nev. Jan. 25, 2002) (conclusory finding of dilution with only a discussion of confusion); Bellsouth Corp. v. Internet Classifieds of Ohio, 1997 WL 33107251, at *23 (N.D. Ga. Nov. 12, 1997) (“a showing of likelihood of confusion is sufficient to demonstrate the dilution of a trademark”); Blaich Assocs., Inc. v. Coach/Blaich Real Estate of Manhasset, Inc., 719 N.Y.S.2d 820, 822 (Sup. Ct. Nassau Co. 2000); Southeastern La. Entm’t v. Hollywood Entm’t Corp., 56 USPQ2d 1688, 1691 (E.D. La. 2000) (FTDA case: stipulation of confusion ends dilution inquiry); Sherwood Ford, Inc. v. Ford Motor Co., 875 F. Supp. 590, 594 (E.D. Mo. 1995) (same set of facts demonstrates both confusion and dilution); Philip Morris, Inc. v. Star Tobacco Corp., 879 F. Supp. 379, 389, 35 USPQ2d 1178 (S.D.N.Y. 1995); Nelson/Weather-Rite, Inc. v. Leatherman Tool Group, Inc., 40 USPQ2d 1239, 1244 (N.D. Ill. 1995) (“a trade dress that is likely to confuse is necessarily one that is likely to dilute”); Saks & Co. v. Hill, 843 F. Supp. 620, 624, 29 USPQ2d 1941 (S.D. Cal. 1993); Emerson Elec. Co. v. Emerson Quiet Kool Corp., 577 F. Supp. 668, 679, 221 USPQ 782 (E.D. Mo. 1983) (confusion constitutes dilution); Tri-Star Pictures, Inc. v. Unger, 14 F. Supp. 2d 339, 363 (S.D.N.Y. 1998); Babbit Elecs., Inc. v. Dynascan Corp., 38 F.3d 1161, 1182, 33 USPQ2d 1001 (11th Cir. 1994); Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 15 F. Supp. 2d 389, 400 (S.D.N.Y. 1998), aff’d, 192 F.3d 337, 52 USPQ2d 1094 (2d Cir. 1999); Kraft Gen. Foods, Inc. v. Allied Old English, Inc., 831 F. Supp. 123, 134 (S.D.N.Y. 1993); Skil Corp. v. Barnet, 150 N.E.2d 551, 555, 117 USPQ 461 (Sup. Jud. Ct. Mass. 1958) (“any possibility that the defendant may confuse the public as to the source of the goods sold by him may be given consideration”). See also Planetary Motion, Inc. v. Techsplosion Inc., 261 F.3d 1188, 59 USPQ2d 1894 (11th Cir. 2001) (district court enjoined dilution under Florida law and the court of appeals apparently affirmed a dilution injunction, though discussed only confusion). See New York City Triathlon, LLC v. NYC Triathlon Club, Inc., 704 F. Supp. 2d 305, 323, 95 USPQ2d 1451 (S.D.N.Y. 2010) (referring to consumer’s “mistaken association” of defendant’s mark with plaintiff’s mark); NeoDevices, Inc. v. NeoMed, Inc., 2009 WL 689881, at *5 (D.N.H. Mar. 12, 2009) (denying personal jurisdiction, the court apparently equates confusion with dilution under New Hampshire law). But see Star Markets, Ltd. v. Texaco, Inc., 950 F. Supp. 1030, 1037 (D. Haw. 1996) (“a finding of trademark dilution does not necessarily flow from a finding of trademark infringement”); Louis Vuitton Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558, 597 (S.D.N.Y. 2007) (rejecting a survey on the grounds that it showed confusion but not blurring).191 F.3d 208, 51 USPQ2d 1882 (2d Cir. 1999).Id. at 219.New York State Soc’y of Certified Pub. Accountants v. Eric Louis Assocs., Inc., 79 F. Supp. 2d 331, 345–46 (S.D.N.Y. 1999). Accord OBH, Inc. v. Spotlight Magazine, Inc., 86 F. Supp. 2d 176, 195, 54 USPQ2d 1383 (W.D.N.Y. 2000).E.g., DS Waters of Am., Inc. v. Princess Abita Water, LLC, 539 F. Supp. 2d 853, 861 n.7 (E.D. La. 2008); Klayman v. Freedom Watch, Inc., 2007 U.S. Dist. LEXIS 83653, at *15 (S.D. Fla. 2007); AutoZone, Inc. v. Tandy Corp., 174 F. Supp. 2d 718, 736–37 (M.D. Tenn. 2001), aff’d on other grounds, 373 F.3d 786, 71 USPQ2d 1385 (6th Cir. 2004) (the Sixth Circuit found confusion to be “irrelevant” to dilution); Ford Motor Co. v. Lloyd Design Corp., 184 F. Supp. 2d 665, 681, 62 USPQ2d 1109 (E.D. Mich. 2002); Deborah Heart & Lung Ctr. v. Children of the World Found., Ltd., 99 F. Supp. 2d 481, 493, 55 USPQ2d 1088 (D.N.J. 2000) (use of a “confusingly similar mark for essentially the same services” would cause dilution). On rare occasions, a court may still erroneously assert that confusion is an element of dilution. E.g., You Fit, Inc. v. Pleasanton Fitness, LLC, 2013 U.S. Dist. LEXIS 18106, at *4 (M.D. Fla. Feb. 8, 2013) (apparently misreading an Eleventh Circuit case).Bell v. Starbucks U.S. Brands Corp., 205 F. App’x. 289 (5th Cir. 2006).AutoZone, 373 F.3d 786, 805, 71 USPQ2d 1385 (6th Cir. 2004). See also Visa Int’l Serv. Ass’n v. JSL Corp., 610 F.3d 1088, 1092, 95 USPQ2d 1571 (9th Cir. 2010) (“the injury addressed by anti-dilution law in fact occurs when marks are placed in new and different contexts, thereby weakening the mark’s ability to bring to mind the plaintiff’s goods or services”).2012 WL 2571332 (N.D. Cal. June 30, 2012). Id. at *4. See Chapter 3, §I.C.One court remarked that a better term for this category might be “trademarkicide.” Plasticolor Molded Prods. v. Ford Motor Co., 713 F. Supp. 1329, 1344 n.22, 11 USPQ2d 1023 (C.D. Cal. 1989), vacated by consent judgment, 767 F. Supp. 1036, 18 USPQ2d 1975 (C.D. Cal. 1991).See generally Julius R. Lunsford, Trademarks and Semantics: The Use and Misuse of Trademarks in Dictionaries and Trade Journals, 62 Trademark Rep. 520 (1972); Gary C. Robb, Trademark Misuse in Dictionaries: Inadequacy of Existing Legal Action and a Suggested Cure, 65 Marq. L. Rev. 179, 185–89 (1981).H.R. Rep. No. 104-374 at 8, 104th Cong., 1st Sess.See id. It is possible, of course, that diminishment was simply another term for blurring.In addition, if dilution requires a trademark use by the second user to be actionable, then a second user who uses a famous mark as a generic term would not be making a trademark use of the famous mark. For a discussion of the possible need for a trademark use, see below, §IV.See Chapter 3, §IV.D, for a discussion of this issue under state law.See Norton v. Newage Indus., 204 USPQ 382, 384 (E.D. Pa. 1979) (enjoining advertisement for “Tygon-type” product, where plaintiff made a product under the Tygon mark); Bristol-Meyers Co. v. R.H. Macy & Co., 151 F. Supp. 513, 514, 113 USPQ 274 (S.D.N.Y. 1957) (comparative advertisement); Polyglycoat Corp. v. Environmental Chems., Inc., 509 F. Supp. 36, 39, 214 USPQ 52 (S.D.N.Y. 1980) (suit by maker of Polyglycoat against maker of a product claiming to remove Polyglycoat).See, e.g., New Kids on the Block v. News Am. Publ’g Inc., 971 F.2d 302, 307, 23 USPQ2d 1534 (9th Cir. 1992) (nominative use permitted); Smith v. Chanel, Inc., 402 F.2d 562, 566–69, 159 USPQ 388 (9th Cir. 1968) (comparative advertising). In Smith, the court noted that the advertisement did not use Chanel’s trademark in a generic manner. Id. at 569.Lanham Act §43(c)(3)(A)(i), 15 U.S.C. §1125(c)(3)(A)(i).A truly nominative use would not be a generic use because it refers to the mark owner, not the product or service itself. Compare Diversified Mktg., Inc. v. Estée Lauder, Inc., 705 F. Supp. 128, 134, 9 USPQ2d 1882 (S.D.N.Y. 1988) (refusing to enjoin comparative advertising using the mark in a nominative fashion) with Eventide, Inc. v. DOD Elecs. Corp., 1995 WL 239044, at *17 (S.D.N.Y. Apr. 24, 1995) (defendant enjoined from using plaintiff’s mark, Harmonizer, as a generic term for defendant’s competing product).Lanham Act §43(c)(3)(A), 15 U.S.C. §1125(c)(3)(A) (excluding both descriptive and nominative fair uses).Lanham Act §43(c)(3)(C), 15 U.S.C. §1125(c)(3)(C).306 F.3d 509, 64 USPQ2d 1689 (7th Cir. 2002), cert. denied, 538 U.S. 971 (2003).Id. at 513.Id. at 514.Id.Freecycle Network, Inc. v. Oey, 505 F.3d 898, 905–06, 84 USPQ2d 1530 (9th Cir. 2007). The court noted that no dilution claim had been made. Id. at 904 n.11. However, the court also stated that “[t]he Lanham Act itself, however, contains no provision preventing the use of a trademarked term in its generic sense.” Id. at 906; see id. n.14. Cf. Illinois Tool Works, Inc. v. J-B Weld Co., LLC, 419 F. Supp. 3d 382, 404 (D. Conn. 2019) (discussing genericide as a possible basis for infringement by confusion).E.g., Mattel, Inc. v. Adventure Apparel, 2001 WL 1035140 at *1 (S.D.N.Y. Sep. 7, 2001); Ford Motor Co. v. Great Domains.com, Inc., 141 F. Supp. 2d 763, 774 (E.D. Mich. 2001), reconsideration granted in part, 177 F. Supp. 2d 635, 61 USPQ2d 1718 (E.D. Mich. 2001); Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F. Supp. 2d 1339, 1341 (S.D. Fla. 2001).Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 880, 51 USPQ2d 1801 (9th Cir. 1999); Victoria’s Cyber Secret, 161 F. Supp. 2d at 1346 (discussing Anticybersquatting Consumer Protection Act). The idea is that another party is, in effect, trespassing in cyberspace on the famous trademark owner’s mark, attempting to gain rights to the name. Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1326, 46 USPQ2d 1511 (9th Cir. 1998).141 Cong. Rec. S19,312 (Dec. 29, 1995).E.g., Victoria’s Cyber Secret, 161 F. Supp. 2d at 1355; Mattel, Inc. v. Internet Dimensions, Inc., 55 USPQ2d 1620, 1627 (S.D.N.Y. 2000); Online Partners.com, Inc. v. Atlantic.Net Media Corp., 2000 WL 101242 (N.D. Cal. Jan. 20, 2000). See Classified Ventures, L.L.C. v. Softcell Marketing, Inc., 109 F. Supp. 2d 898, 901 (N.D. Ill. 2000) (spam e-mail, often touting pornography services, used plaintiff’s cars.com trademark as a domain name for the origination of the e-mail); Hasbro, Inc. v. Internet Entm’t Group, Ltd., 40 USPQ2d 1479, 1480 (W.D. Wash. 1996) (finding dilution where defendant used candyland.com for pornography services on the Internet, but without using the term “tarnishment”).E.g., Mattel, Inc. v. Internet Dimensions, Inc., 55 USPQ2d 1620,1627 (S.D.N.Y. 2000).Ford Motor Co. v. Great Domains.com, Inc., 177 F. Supp. 2d 635, 654–55, 61 USPQ2d 1718 (E.D. Mich. 2001).Pub. L. No. 106-113, 113 Stat. 1536, 106th Cong., 1st Sess. (1999), codified in part at 15 U.S.C. §§1125(d), 1129.Lanham Act §43(d)(1), 15 U.S.C. §1125(d)(1).Chapter 14 discusses various issues raised by the interaction of the ACPA and the TDRA.One may also bring an arbitration proceeding under the Uniform Domain Name Dispute Resolution Policy (UDRP) of the Internet Corporation for Assigned Names and Numbers (ICANN), which allows mark owners to use arbitration to force domain name registrants to turn over their domain names to the famous mark owner. The UDRP can be found at <www.icann.org/udrp/udrp-policy-24oct99.htm> (last visited June 23, 2011).302 F.3d 248, 64 USPQ2d 1248 (4th Cir. 2002).Id. at 261.See below, §IV.E.g., Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1326 (9th Cir. 1998); see Deere & Co. v. MTD Prods., Inc., 41 F.3d 39, 44 (2d Cir. 1994) (in a non-Internet case, stating that blurring and tarnishment are not all of the possible categories).E.g., Panavision Int’l, 141 F.3d at 1327; Virtual Works, Inc. v. Network Solutions, Inc., 106 F. Supp. 2d 845, 847–48, 54 USPQ2d 1126 (E.D. Va. 2000), aff’d on other grounds sub nom. Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264, 57 USPQ2d 1547 (4th Cir. 2001) (affirmed on the district court’s ruling that defendant violated the Anticybersquatting Consumer Protection Act); Jews for Jesus v. Brodsky, 993 F. Supp. 282, 306–07, 46 USPQ2d 1652 (D.N.J.), aff’d, 159 F.3d 1351 (3d Cir. 1998); Intermatic, Inc. v. Toeppen, 947 F. Supp. 1227, 1240, 40 USPQ2d 1412 (N.D. Ill. 1996).141 F.3d 1316, 46 USPQ2d 1511 (9th Cir. 1998).947 F. Supp. 1227, 40 USPQ2d 1412 (N.D. Ill. 1996).Panavision, 141 F.3d at 1326.Id.Id.(quoting 945 F. Supp. at 1304).Id. at 1327. Toeppen did not use the domains to display or link to pornography. On the panavision.com Web site, he displayed a picture of Pana, Illinois. Id. at 1319. On the panaflex.com Web site (Panaflex is a trademark owned by Panavision), Toeppen just put the word “hello.” Id. This caused some concern about whether he was making “commercial use” of the mark, but the court found that he had done so. See Chapter 7, §III, for a discussion of commercial use.947 F. Supp. at 1229. Toeppen also registered a number of other companies’ names as his domain names. Id. at 1230.Id. at 1240.Id. at 1240–41.E.g., Caterpillar, Inc. v. Telescan Techs., LLC, 2002 WL 1301304, at *5 (C.D. Ill. Feb. 13, 2002); Aztar Corp. v. MGM Casino, 59 USPQ2d 1460, 1464 (E.D. Va. 2001); Virtual Works, Inc. v. Network Solutions, Inc., 106 F. Supp. 2d 845, 847, 54 USPQ2d 1126 (E.D. Va. 2000), aff’d on other grounds sub nom. Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264, 57 USPQ2d 1547 (4th Cir. 2001) (affirmed on violation of ACPA); Paccar, Inc. v. Telescan Techs., L.L.C., 115 F. Supp. 2d 772, 779–80 (E.D. Mich. 2000), vacated in part, aff’d in part on other grounds, 319 F.3d 243, 65 USPQ2d 1761 (6th Cir. 2003) (the Sixth Circuit did not rule on the dilution issue); Mirage Resorts, Inc. v. Stirpe, 152 F. Supp. 2d 1208, 1217 (D. Nev. 2000); Jews for Jesus v. Brodsky, 993 F. Supp. 282, 306–07, 46 USPQ2d 1652 (D.N.J.), aff’d, 159 F.3d 1351 (3d Cir. 1998); Lozano Enters. v. La Opinion Publ’g Co., 44 USPQ2d 1764, 1769 (C.D. Cal. 1997); Hasbro, Inc. v. Internet Entm’t Group, Ltd., 40 USPQ2d 1479, 1480 (W.D. Wash. 1996). See Visa Int’l Serv. Ass’n v. JSL Corp., No. CV-S-01-0294-LRH, slip op. at 22–23 (D. Nev. Oct. 22, 2002) (following Panavision and Mirage cases), vacated and remanded, 90 F. App’x. 484 (9th Cir. 2003) (unpublished opinion). See also Planned Parenthood Fed’n of Am., Inc. v. Bucci, 42 USPQ2d 1430, 1441 (S.D.N.Y. 1997) (concluding that dilution exists, with little analysis apart from a discussion of commercial use), aff’d mem., 152 F.3d 920 (2d Cir.), cert. denied, 525 U.S. 834 (1998); Key3Media Events, Inc. v. Convention Connection, Inc., 2002 WL 385546, at *4 (D. Nev. Jan. 25, 2002) (concluding that dilution exists, with little discussion apart from noting that confusion was likely to occur).106 F. Supp. 2d 845, 54 USPQ2d 1126 (E.D. Va. 2000), aff’d on other grounds, 238 F.3d 264, 57 USPQ2d 1547 (4th Cir. 2001) (appeals court affirmation on ACPA grounds).Id. at 846.Id. at 847 (citations omitted).44 USPQ2d 1764 (C.D. Cal. 1997).Id. at 1769 (citations omitted).45 USPQ2d 1944, 1948–49 (S.D.N.Y. 1997). See Trans Union LLC v. Credit Research, Inc., 142 F. Supp. 2d 1029, 1046 (N.D. Ill. 2001) (finding defendant’s use of transunion.com, .org., and .net domains diluted plaintiff’s Trans Union mark, but with little discussion of why dilution exists); Hasbro, Inc. v. Internet Entm’t Group, Inc., 40 USPQ2d 1479, 1480 (W.D. Wash. 1996) (enjoining defendant’s use of candyland.com with little discussion of why dilution exists).Hasbro, Inc. v. Clue Computing, Inc., 66 F. Supp. 2d 117, 133, 52 USPQ2d 1402 (D. Mass. 1999), aff’d, 232 F.3d 1, 56 USPQ2d 1766 (1st Cir. 2000); HQM, Ltd. v. Hatfield, 71 F. Supp. 2d 500 (D. Md. 1999); Strick Corp. v. Strickland, 162 F. Supp. 2d 372, 379–80, 60 USPQ2d 1889 (E.D. Pa. 2001); see Ford Motor Co. v. GreatDomains.com, Inc., 177 F. Supp. 2d 635, 652–54, 61 USPQ2d 1718 (E.D. Mich. 2001).66 F. Supp. 2d 117, 52 USPQ2d 1402 (D. Mass. 1999), aff’d, 232 F.3d 1, 56 USPQ2d 1766 (1st Cir. 2000).Id. at 133.Id.71 F. Supp. 2d 500 (D. Md. 1999).Id. at 506.Id. at 508–09 (citing Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d 449, 50 USPQ2d 1065 (4th Cir.), cert. denied, 528 U.S. 923 (1999)).Id. at 509.162 F. Supp. 2d 372, 60 USPQ2d 1889 (E.D. Pa. 2001).The name “strickland.com” had already been registered by someone else not connected with either party. Id. at 373.Id. at 379–80. The court assumed, without deciding the issue, that Strick was a famous mark. Id. at 378.Id. at 379. See also Ford Motor Co. v. 2600 Enters., 177 F. Supp. 2d 661, 665, 61 USPQ2d 1757 (E.D. Mich. 2001) (citing and quoting Strick in discussion of infringement claim).162 F. Supp. at 380.189 F.3d 868, 51 USPQ2d 1801 (9th Cir. 1999).Id. at 881.Id. at 880.177 F. Supp. 2d 635, 61 USPQ2d 1718 (E.D. Mich. 2001).Id. at 653.Id.Id. (quoting Strick Corp. v. Strickland, 162 F. Supp. 2d 372, 380, 60 USPQ2d 1889 (E.D. Pa. 2001)).Avlon Indus. v. Robinson, 2005 WL 331561, at *3 (N.D. Ill. Feb. 8, 2005). The court also cited the Supreme Court’s statement in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 432–33, 65 USPQ2d 1801 (2003), that if the marks are identical, that would be circumstantial evidence of dilution.Playboy Enters., Inc. v. Netscape Commc’ns Corp., 55 F. Supp. 2d 1070, 1088–89, 52 USPQ2d 1162 (C.D. Cal.), aff’d mem., 202 F.3d 278 (9th Cir. 1999). See Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 880 (9th Cir. 1999) (“Appellants do not use trademarks qua trademarks as required by the caselaw to establish commercial use”); Ford Motor Co. v. GreatDomains.com, Inc., 177 F. Supp. 2d 635, 654–55 (E.D. Mich. 2001) (buying and selling of domain names containing trademarks not a use on goods and services).E.g., People for the Ethical Treatment of Animals, Inc. v. Doughney, 113 F. Supp. 2d 915, 920 (E.D. Va. 2000) (finding peta.org diluted plaintiff’s mark using the “actual harm” standard of the Fourth Circuit), aff’d on other grounds, 263 F.3d 359, 60 USPQ2d 1109 (4th Cir. 2001) (affirming on ACPA grounds alone); OBH, Inc. v. Spotlight Magazine, Inc., 86 F. Supp. 2d 176, 194–96, 54 USPQ2d 1383 (W.D.N.Y. 2000) (finding www.thebuffalonews.com diluted mark of the Buffalo News using Second Circuit’s multifactor analysis).E.g., Trans Union LLC v. Credit Research, Inc., 142 F. Supp. 2d 1029, 1046 (N.D. Ill. 2001) (refusing to enjoin defendant’s .com, .org, and .net domains with the name “creditbureautransunion”; plaintiff’s mark was Trans Union); see Ty Inc. v. Perryman, 2001 WL 826893, at *14 (N.D. Ill. Jul. 17, 2001) (“bargainbeanies.com” not similar to plaintiff’s Beanie Babies mark), clarified at 2001 WL 1223550 (N.D. Ill. Oct. 12, 2001), vacated on other grounds, 306 F.3d 509, 64 USPQ2d 1689 (7th Cir. 2002) (reversing finding of dilution), cert. denied, 538 U.S. 971 (2003). See also Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.2d 264, 271, 57 USPQ2d 1547 (4th Cir. 2001) (stating that the “ACPA [Anticybersquatting Consumer Protection Act] was not enacted to give companies the right to fence off every possible combination of letters that bears any similarity to a protected mark”).E.g., Jews for Jesus v. Brodsky, 993 F. Supp. 282, 306–07, 46 USPQ2d 1652 (D.N.J.), aff’d, 159 F.3d 1351 (3d Cir. 1998); Intermatic, Inc. v. Toeppen, 947 F. Supp. 1227, 1240–41, 40 USPQ2d 1412 (N.D. Ill. 1996); Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1327, 46 USPQ2d 1511 (9th Cir. 1998).26 F. Supp. 2d 639, 52 USPQ2d 1688 (S.D.N.Y. 1998), vacated and remanded, 201 F.3d 432 (2d Cir. 1999).Id. at 644. See Northland Ins. Cos. v. Blaylock, 115 F. Supp. 2d 1108, 1123, 56 USPQ2d 1662 (D. Minn. 2000) (defendant’s use of northlandinsurance.com for a Web site critical of plaintiff held not a commercial use).It is unclear how the pre-TDRA requirement of actual dilution imposed by the Supreme Court in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 433, 65 USPQ2d 1801 (2003), would have affected the per se dilution rationale. On the one hand, the Court indicated that a junior use of an identical mark may be sufficient “circumstantial evidence” of actual dilution. Id. at 434. If one considers www.famoustrademark.com (or .net, .org., etc.) to be the use of an identical mark, then one might view the Court’s decision as supporting this analysis. (More than one court has used Moseley in this manner. Avlon Indus. v. Robinson, 2005 WL 331561, at *3 (N.D. Ill. Feb. 8, 2005); Pinehurst, Inc. v. Wick, 256 F. Supp. 2d 424, 431–32, 66 USPQ2d 1610 (M.D.N.C. 2003).) However, the primary rationale for the per se test has been that the junior use “blocks” the use of the domain name by the famous mark owner. That did not correspond to the original FTDA definition of dilution, or to the Court’s understanding of dilution as attacking the capacity of the mark to identify its owner. See Moseley, 537 U.S. at 433–34. Moreover, the Court’s unwillingness to stretch the statutory language suggests that it would not be willing to do so to permit these dilution claims, particularly where an alternative remedy (the ACPA) exists. Where the domain name does not consist solely of famoustrademark.com, the viability of a per se analysis is even more dubious. Under the actual dilution standard, mere similarity or mental association between the domain name and the famous mark did not suffice. Id. at 433 (mental association does not show actual dilution).Nissan Motor Co., Ltd. v. Nissan Computer Corp., 2007 U.S. Dist. LEXIS 90487, at *45 (C.D. Cal. Sept. 20, 2007). But cf. Ticketmaster Corp. v. Devane, 2008 U.S. Dist. LEXIS 39369, at *9 (E.D.N.C. May 12, 2008), where the court entered a default judgment on several claims, including dilution. The court asserted that by preventing others from potentially reaching Ticketmaster’s Web site, defendant diluted plaintiff’s mark. However, defendant’s Web site was ticketmasterevent.com, not ticketmaster.com, so the claim of “blocking” seems a bit strained (though the confusion and ACPA claims were probably well founded). And in MasterCard Int’l, Inc. v. Trehan, 629 F. Supp. 2d 824, 832–33 (N.D. Ill. 2009), the court cited pre-TDRA case law in support of a “blocking” type of dilution claim (cases that also predated the widespread use of search engines), without considering whether a different standard should now apply.V Secret Catalogue, Inc. v. Moseley, 605 F.3d 382, 388, 95 USPQ2d 1050 (6th Cir. 2010), cert. denied, 131 S. Ct. 1003 (2011). This issue is discussed above, §II.E.2.a.ii.605 F.3d at 388.Pinterest, Inc. v. Jin, 2013 U.S. Dist. LEXIS 142162, at *7 (N.D. Cal. Sept. 30, 2013) (default judgment). Pub. L. No. 106-113, App. I, §3001, 113 Stat. 1501A-545 (Oct. 6, 2006) (codified at 15 U.S.C. §§1114, 1116, 1117, 1125, 1127). E.g., Planned Parenthood Fed’n of Am., Inc. v. Bucci, 42 USPQ2d 1430 (S.D.N.Y. 1997), aff’d mem., 152 F.3d 920 (2d Cir.), cert. denied, 525 U.S. 834 (1998); Northland Ins. Cos. v. Blaylock, 115 F. Supp. 2d 1108, 56 USPQ2d 1662 (D. Minn. 2000); Jews for Jesus v. Brodsky, 993 F. Supp. 282, 46 USPQ2d 1652 (D.N.J.), aff’d, 159 F.3d 1351 (3d Cir. 1998); People for the Ethical Treatment of Animals, Inc. v. Doughney, 113 F. Supp. 2d 915 (E.D. Va. 2000), aff’d, 263 F.3d 359, 60 USPQ2d 1109 (4th Cir. 2001) (the Fourth Circuit did not reach the dilution claim); OBH, Inc. v. Spotlight Magazine, Inc., 86 F. Supp. 2d 176, 54 USPQ2d 1383 (W.D.N.Y. 2000). See Taubman Co. v. Webfeats, 319 F.3d 770, 775–77, 65 USPQ2d 1834 (6th Cir. 2003) (dismissing claims for lack of commercial use).See Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161, 50 USPQ2d 1840 (C.D. Cal. 1998) (Web site called Bally sucks accessible at www.compupix.com/ballysucks). See also Ford Motor Co. v. 2600 Enters., 177 F. Supp. 2d 661, 61 USPQ2d 1757 (E.D. Mich. 2001) (fuckgeneralmotors.com site with automatic link to “ford.com”); Lucent Techs., Inc. v. Lucentsucks.com, 95 F. Supp. 2d 528, 54 USPQ2d 1653 (E.D. Va. 2000) (rejecting ACPA claim made against domain name lucentsucks.com); Bihari v. Gross, 119 F. Supp. 2d 309, 56 USPQ2d 1489 (S.D.N.Y. 2000) (name of plaintiff’s business contained in a metatag).Lanham Act §43(c)(1), 15 U.S.C. §1125(c)(1).The definition is as follows:The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce—  (1) on goods when—    (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and    (B) the goods are sold or transported in commerce, and  (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.Lanham Act §45, 15 U.S.C. §1127 (definition of “use in commerce”).15 U.S.C. §1125(c)(3)(C). The noncommercial use exclusion is discussed in Chapter 10, §IV. In Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 72 USPQ2d 1078 (9th Cir. 2004), cert. denied, 544 U.S. 974 (2005), the Ninth Circuit held that an injunction prohibiting defendant from placing links on its Web site to Web sites critical of plaintiff enjoined noncommercial activity and violated the First Amendment. Id. at 1017–18.E.g., Planned Parenthood, 42 USPQ2d at 1437; Doughney, 113 F. Supp. 2d at 920; OBH, 86 F. Supp. 2d at 182; Jews for Jesus, 993 F. Supp. at 291. See Nissan Motor Co., Ltd. v. Nissan Computer Corp., 231 F. Supp. 2d 977, 980, 65 USPQ2d 2008 (C.D. Cal. 2002) (critical commentary on defendant’s nissan.com and nissan.net Web sites constitutes “commercial” use), aff’d in part, rev’d in part, 378 F.3d 1002, 1016–18 (9th Cir. 2004) (such commentary implicates the First Amendment and cannot be enjoined), cert. denied, 544 U.S. 974 (2005). But see 2600 Enters., 177 F. Supp. 2d at 664–65; Northland Ins., 115 F. Supp. 2d at 1120–21.115 F. Supp. 2d 1108, 56 USPQ2d 1662 (D. Minn. 2000).Id. at 1123.Id.319 F.3d 770, 65 USPQ2d 1834 (6th Cir. 2003).Id. at 775 & n.3.Id. at 776. The court noted that in other cases where such sales were found to constitute a commercial use, the defendants were operating a business of selling domain names. Id.403 F.3d 672, 74 USPQ2d 1280 (9th Cir. 2005).Id. at 677.Id. at 678.Id. at 678–79. The court rejected the approach taken in People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 60 USPQ2d 1109 (4th Cir. 2001). Bosley was followed in a post-TDRA case, Best W. Int’l, Inc. v. Doe, 2006 U.S. Dist. LEXIS 77942, at *7–8 (D. Ariz. Oct. 24, 2006).Compare, e.g., TMI, Inc. v. Maxwell, 368 F.3d 433, 70 USPQ2d 1630 (5th Cir. 2004) (dismissing FTDA and ACPA claims against defendant for registration of www.trendmakerhome.info, a complaint site against TrendMaker Homes); Lucas Nursery & Landscaping, Inc. v. Grosse, 359 F.3d 806, 809, 70 USPQ2d 1149 (6th Cir. 2004) (dismissing ACPA claim); Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 74 USPQ2d 1280 (9th Cir. 2005); Mayflower Transit, LLC v. Prince, 314 F. Supp. 2d 362, 70 USPQ2d 1814 (D.N.J. 2004) (dismissing ACPA claim), with Coca-Cola Co. v. Purdy, 382 F.3d 774, 72 USPQ2d 1305 (8th Cir. 2004); Board of Dirs. of Sapphire Bay Condos. W. v. Simpson, 129 F. App’x. 711, 714–15 (3d Cir. 2005) (nonprecedential opinion).Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161, 50 USPQ2d 1840 (C.D. Cal. 1998).Id. at 1167–68.Id. at 1162.Id. at 1167. See also Ford Motor Co. v. 2600 Enters., 177 F. Supp. 2d 661, 664–65, 61 USPQ2d 1757 (E.D. Mich. 2001); Lucent Techs., Inc. v. Lucentsucks.com, 95 F. Supp. 2d 528, 535–36, 54 USPQ2d 1653 (E.D. Va. 2000).If a competitor were to create such a site, it probably would be a commercial use. It still would not necessarily be diluting, but it may be actionable as a form of unfair competition.Taubman Co. v. Webfeats, 319 F.3d 770, 777–78, 65 USPQ2d 1834 (6th Cir. 2003). The court characterized such sites as “cybergriping.” Id. at 772–73 (citing Martha Kelley, Is Liability Just a Link Away? Trademark Dilution by Tarnishment Under the Federal Trademark Dilution Act of 1995 and Hyperlinks on the World Wide Web, 9 J. Intell. Prop. L. 361, 375 (2002)).See Planned Parenthood Fed’n of Am., Inc. v. Bucci, 42 USPQ2d 1430, 1440 (S.D.N.Y. 1997), aff’d, 152 F.3d 920 (2d Cir.), cert. denied, 525 U.S. 834 (1998).This use may also be excluded by the TDRA’s fair use exclusion in §43(c)(3)(A). See Chapter 10, §II.Obviously, the mark owner may assert that the use is likely to cause confusion of sponsorship or approval.This aspect of the fair use exclusion is discussed in Chapter 10, §II.A.2.306 F.3d 509, 64 USPQ2d 1689 (7th Cir. 2002), cert. denied, 538 U.S. 971 (2003).Id. at 512.Id. at 513–14. The court did uphold that portion of the injunction that prevented defendant from using the category “Other Beanies” to describe beanbag toys not made by Ty. However, it did so on a confusion rationale. Id. at 514. This use may also be excluded from dilution liability under §43(c)(3)(A) as a nominative fair use.306 F.3d at 513–14. See Chapter 3, §IV.D, and §II.G, above, for discussions of dilution by genericide.115 F. Supp. 2d 772 (E.D. Mich. 2000)), vacated in part, aff’d in part on other grounds, 319 F.3d 243, 65 USPQ2d 1761 (6th Cir. 2003) (the Sixth Circuit did not rule on the dilution issue).Id. at 775. The Web sites attached to these domains contained disclaimers, stating that they had no connection with the owner of the marks. Id.Id. at 780.See Caterpillar, Inc. v. Telescan Techs., LLC, 2002 WL 1301304, at *5 (C.D. Ill. Feb. 13, 2002) (finding defendant’s registration of such domain names as catusedequipment.com, caterpillarusedequip.com, caterpillarequipment.com, and caterpillardealers.com violated FTDA). Cf. Ford Motor Co. v. GreatDomains.com, Inc., 177 F. Supp. 2d 635, 61 USPQ2d 1718 (E.D. Mich. 2001) (defendant’s use of domain names that incorporated Ford’s marks, including jaguarenthusiastsclub.com and vintagevolvos.com, found to violate ACPA, but found not dilutive because not a trademark use).See Trans Union LLC v. Credit Research, Inc., 142 F. Supp. 2d 1029, 1037 (N.D. Ill. 2001).For example, a pornographic site might put “Microsoft” in a metatag so that persons typing “Microsoft” into a search engine would retrieve a link to the pornographic site.See, e.g., Allied Interstate, LLC v. Kimmel & Silverman, P.C., 2013 U.S. Dist. LEXIS 113465, at *9–10 (S.D.N.Y. Aug. 12, 2013); Trans Union, 142 F. Supp. 2d at 1040; Bihari v. Gross, 119 F. Supp. 2d 309, 321–24, 56 USPQ2d 1489 (S.D.N.Y. 2000); Playboy Enters., Inc. v. Welles, 7 F. Supp. 2d 1098, 1104 (S.D. Cal.), aff’d, 162 F.3d 1169 (9th Cir. 1998). The “fair use” exclusion is discussed in Chapter 10, §II.See Brookfield Commc’ns, Inc. v. West Coast Entm’t Corp., 174 F.3d 1036, 1067, 50 USPQ2d 1545 (9th Cir. 1999); Key3Media Events, Inc. v. Convention Connection, Inc., 2002 WL 385546, at *3 (D. Nev. Jan. 25, 2002).See New York State Soc’y of Certified Pub. Accountants v. Eric Louis Assocs., Inc., 79 F. Supp. 2d 331, 346 (S.D.N.Y. 1999) (discussing possible tarnishment by a metatag, though finding against plaintiff); V Secret Stores v. Artco Equip. Co., 194 F. Supp. 2d 704, 729 (S.D. Ohio 2002).But see Eric Louis Assocs., 79 F. Supp. 2d at 344–46 (finding blurring from use of plaintiff’s mark in both domain name and metatag, but without separating the two analytically); Key3Media Events, Inc. v. Convention Connection, Inc., 2002 WL 385546, at *4 (D. Nev. Jan. 25, 2002) (finding dilution based on “confusingly similar” terms in domain names and metatags, without analytical distinction). See also V Secret Stores v. Artco Equip. Co., 194 F. Supp. 2d 704, 729–31 (S.D. Ohio 2002) (citing use in metatags as dilution by tarnishment).Most likely, the user would attribute the misdirection to some kind of computer code error.258 F. Supp. 2d 1353 (N.D. Ga. 2003).Id. at 1362.Id. at 1363.See Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 986, 52 USPQ2d 1481 (9th Cir. 1999). See generally John T. Cross, Contributory and Vicarious Liability for Trademark Dilution, 80 Or. L. Rev. 625 (2001).See, e.g., Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 853–54, 214 USPQ 1 (1982); Coca-Cola Co. v. Snow Crest Beverages, Inc., 64 F. Supp. 980, 989, 68 USPQ 437 (D. Mass. 1946), aff’d, 162 F.2d 280, 73 USPQ 518 (1st Cir.), cert. denied, 332 U.S. 809, 75 USPQ 365 (1947).The formulation of the elements of contributory infringement is not consistent among the cases, so this description is necessarily imprecise. Compare Ives Labs., 456 U.S. at 854–55 & n.13 with id. at 859–61 (White, J., concurring) (criticizing the majority’s formulation).E.g., Tiffany (NJ), Inc. v. eBay, Inc., 600 F.3d 93, 104, 94 USPQ2d 1188 (2d Cir.), cert. denied, 131 S. Ct. 647 (2010); Coca-Cola Co., 64 F. Supp. at 989; Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259, 264–65, 37 USPQ2d 1590 (9th Cir. 1996) (“flea market” landlord could be held liable where it creates a marketplace and deliberately ignores infringement).Lanham Act §43(c)(1), 15 U.S.C. §1125(c)(1) (emphasis added).Simply being sent a letter alleging dilution would not really help the investigation all that much. Because secondary liability (in both dilution and infringement) requires a certain level of fault or knowledge, imposing such liability is not the same as imposing it on a direct infringer or diluter. Contributory tarnishment might be an easier route, except that the dilution exclusions would be a formidable obstacle to recovery.See Perfect 10, Inc. v. Cybernet Ventures, Inc., 167 F. Supp. 2d 1114, 1123 n.9 (C.D. Cal. 2001) (noting lack of precedent but not deciding the issue). In Tiffany (NJ), Inc. v. eBay, Inc., 576 F. Supp. 2d 463, 476 (S.D.N.Y. 2008), aff’d, 600 F.3d 93, 94 USPQ2d 1188 (2d Cir.), cert. denied, 131 S. Ct. 647 (2010), the court noted the lack of precedent for a contributory dilution claim. In Google, Inc. v. American Blind & Wallpaper Factory, Inc., 74 USPQ2d 1385, 1394 (N.D. Cal. 2005), the court denied a motion to dismiss contributory dilution claims under federal and state law, without any discussion of the theoretical legitimacy of such claims. However, the court designated this opinion as non-precedential.Lockheed Martin Corp. v. Network Solutions, Inc., 175 F.R.D. 640, 645–46, 44 USPQ2d 1521 (C.D. Cal. 1997), aff’d, 194 F.3d 980, 52 USPQ2d 1481 (9th Cir. 1999).576 F. Supp. 2d 463 (S.D.N.Y. 2008), aff’d, 600 F.3d 93, 112, 94 USPQ2d 1188 (2d Cir.), cert. denied, 131 S. Ct. 647 (2010).Id. at 526.Id.600 F.3d 93, 112, 94 USPQ2d 1188 (2d Cir. 2010) (noting that eBay dropped its contributory dilution claim on appeal, but that it would fail in any event).Compare Lockheed Martin, 175 F.R.D. at 645–46 (refusing to allow an amendment adding a contributory dilution claim on grounds that it was futile) and Academy of Motion Picture Arts, 989 F. Supp. at 1279 (finding no indication that contributory dilution is actionable under California law), with Kegan v. Apple Computer, Inc., 42 USPQ2d 1053, 1062 (N.D. Ill. 1996). See Chapter 3, §IV.F.42 USPQ2d 1053 (N.D. Ill. 1996).Id. at 1054–55.Id. at 1055.Id. at 1062.Ironically, the former Illinois law, worded like the current one in Georgia, contained language that could be used to argue against the existence of such a claim.Steinway, Inc. v. Ashley, 2002 WL 122929, at *2 (S.D.N.Y. Jan. 29, 2002).Coach, Inc. v. Gata Corp. 98 USPQ2d 1911, 1915 (D.N.H. 2011). The court did not discuss the skeptical language in Tiffany about the existence of such a claim. Accord Energizer Brands, LLC v. Procter & Gamble Co., 2016 WL 2894708, at *4 (E.D. Mo. May 18, 2016) (citing cases permitting contributory dilution claims); Coach, Inc. v. Sapatis, 994 F. Supp. 2d 192, 201–02, 109 USPQ2d 2117, 2125 (D.N.H. 2014) (parties did not contest existence of such a claim); Coach, Inc. v. Farmers Mkt. & Auction, 881 F. Supp. 2d 695, 705–06 (D. Md. 2012);Microsoft Corp. v. Shah, 98 USPQ2d 1404, 1408 (W.D. Wash. 2011) (allowing such a claim to continue, the court stated: “It would be inconsistent with the Trademark Dilution Act to prohibit a cause of action for contributory dilution.”).Coach, Inc. v. Farmer’s Mkt. & Auction, 881 F. Supp. 2d 695, 705–06 (D. Md. 2012). Coach, Inc. v. Swap Shop, Inc., 2012 WL 12887010, at *6 (S.D. Fla. Sept. 21, 2012). Id. at *7. See Dentsply Sirona Inc. v. Net32, Inc., 2018 WL 3473973, at *3 (M.D. Pa. July 19, 2018) (defendant’s sale of plaintiff’s products at a discount not actionable absent evidence of material differences in the products).989 F. Supp. 1276, 1279 (C.D. Cal. 1997).Fare Deals Ltd. v. World Choice Travel.com, Inc., 180 F. Supp. 2d 678, 696–97 (D. Md. 2001) (analyzing infringement and dilution claims together).Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 986, 52 USPQ2d 1481 (9th Cir. 1999) (any such claim should be limited to knowingly supplying the diluting product or exercising control over its production).See Tiffany (NJ), Inc. v. eBay, Inc., 600 F.3d 93, 112, 94 USPQ2d 1188 (2d Cir.), cert. denied, 131 S. Ct. 647 (2010); Lockheed Martin Corp. v. Network Solutions, Inc., 175 F.R.D. 640, 645–46, 44 USPQ2d 1521 (C.D. Cal. 1997), aff’d, 194 F.3d 980, 52 USPQ2d 1481 (9th Cir. 1999).E.g., Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 955 F. Supp. 605, 618, 42 USPQ2d 1161 (E.D. Va. 1997), aff’d, 170 F.3d 449, 50 USPQ2d 1065 (4th Cir.), cert. denied, 528 U.S. 923 (1999); McNeil Consumer Brands, Inc. v. U.S. Dentek Corp., 116 F. Supp. 2d 604, 608, 56 USPQ2d 1758 (E.D. Pa. 2000); Eli Lilly & Co. v. Natural Answers, Inc., 86 F. Supp. 2d 834, 852 (S.D. Ind.), aff’d, 233 F.3d 456, 56 USPQ2d 1942 (7th Cir. 2000); Hershey Foods Corp. v. Mars, Inc. 998 F. Supp. 500, 520 (M.D. Pa. 1998); American Cyanamid Corp. v. Nutraceutical Corp., 54 F. Supp. 2d 379, 392 (D.N.J. 1999); Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. B.E. Windows Corp., 937 F. Supp. 204, 211, 40 USPQ2d 1010 (S.D.N.Y. 1996); Elvis Presley Enters., Inc. v. Capece, 950 F. Supp. 783, 798 (S.D. Tex. 1996), rev’d on other grounds, 141 F.3d 188, 46 USPQ2d 1737 (5th Cir. 1998); Michael Caruso & Co. v. Estefan Enters., Inc., 994 F. Supp. 1454, 1464 (S.D. Fla.), aff’d mem., 166 F.3d 353 (11th Cir. 1998); Toro Co. v. ToroHead, Inc., 61 USPQ2d 1164, 1183 (T.T.A.B. 2001). See Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 218, 51 USPQ2d 1882 (2d Cir. 1999).Thane Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 905, 907, 64 USPQ2d 1564 (9th Cir. 2002).In Thane International, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 64 USPQ2d 1564 (9th Cir. 2002), where the question was the similarity of the mark OrbiTrek to the allegedly famous mark Trek (the latter primarily known as a mark for bicycles), the court found that a jury could view them as identical or nearly so. Id. at 907. In Perfumebay.com, Inc. v. eBay, Inc., 506 F.3d 1165, 84 USPQ2d 1865 (9th Cir. 2007), the Ninth Circuit found that Perfumebay was sufficiently similar to eBay to merit dilution protection. Id. at 1181. In particular, the court held that the district court (which had ruled the two marks were not sufficiently similar) erred by not considering the strength of the eBay mark in its similarity analysis. Id. As a result, it appears that the test of “nearly identical” is of little value, because all of the marks in question will be very strong and, presumably, all will be considered “nearly identical” to a very large range of marks.In Nike, Inc. v. Nikepal International, Inc., 84 USPQ2d 1820 (E.D. Cal. 2007), the court found that Nikepal was sufficiently similar to Nike under this test. Id. at 1827. In Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 85 USPQ2d 1895 (9th Cir. 2008), the court held that “a reasonable trier of fact could find that the hot wheels and hot rigz marks are nearly identical.” Id. at 635. However, context often dictates different results. In one post-TDRA case, the court followed the “identical or nearly identical” requirement and held that the marks Century 21 (for real estate services) and Century for insurance were not substantially similar. Century 21 Real Estate, LLC v. Century Ins. Group, 2007 WL 484555, at *14–15 (D. Ariz. Feb. 9, 2007), aff’d, 300 F. App’x. 527 (9th Cir. 2008).588 F.3d 97, 92 USPQ2d 1769 (2d Cir. 2009).Id. at 108–09.Id. at 108.Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 633 F.3d 1158, 1171–73, 97 USPQ2d 1947 (9th Cir. 2011). These two cases are discussed in more detail above, §II.D.5.The TTAB has now adopted their approach. See UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868, 1888 (T.T.A.B. 2011) (adopting the Second Circuit approach); Nike, Inc. v. Maher, 100 USPQ2d 1018, 1028–30 (T.T.A.B. 2011) (seemingly adopting the Second and Ninth Circuit approach). But cf. Luxottica Group, SPA v. Eye Story, Inc., 2020 WL 2404913, at *4 (C.D. Cal. May 11, 2020) (using the pre-Levi Strauss standard of “identical or nearly identical”); Ebates, Inc. v. Cashbag.co.za, 2019 WL 6816113, at *9–10 (N.D. Cal. Oct. 30, 2018) (magistrate judge opinion) (using the pre-Levi Strauss standard of “identical or nearly identical” and refusing a default judgment on that basis); Deere & Co. v. FIMCO, Inc., 302 F. Supp. 3d 837, 898 & n.14 (W.D. Ky. 2017) (discussing the Starbucks and Levi Strauss standard, but noting (1) that the Sixth Circuit had not yet ruled on the question, and (2) in this case, the uses were very similar), superseded in part by 301 F. Supp. 3d 704 (W.D. Ky. 2018); Citigroup, Inc. v. Capital City Bank Group, Inc., 94 USPQ2d 1645, 1667 (T.T.A.B. 2010), aff’d on other grounds, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011) (acknowledging, but not using, the Starbucks standard). See also Louis Vuitton Malletier, S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 268, 84 USPQ2d 1969 (4th Cir. 2007) (noting that the defendant’s Chewy Vuiton parody was not so similar as to imply that it was a use of plaintiff’s mark).In Starbucks, the court specifically retained the substantial similarity requirement for claims brought under New York’s dilution statute. 588 F.3d at 114.Even where a court presumed tarnishment from a sexually oriented use, it required a “clear semantic association” between the two marks. V Secret Catalogue, Inc. v. Moseley, 605 F.3d 382, 385, 95 USPQ2d 1050 (6th Cir. 2010), cert. denied, 131 S. Ct. 1003 (2011).Nordstrom, Inc. v. Nomorerack Retail Grp., Inc., 2013 U.S. Dist. LEXIS 41810, at *32 (W.D. Wash. Mar. 25, 2013). The court in VIP Prods., LLC v. Jack Daniel’s Props., Inc., 291 F. Supp. 3d 891, 901 (D. Ariz. 2018), appears to have taken a similar approach. Nordstrom, 2013 U.S. Dist. LEXIS 41810, at *32. McNeil Consumer Brands, Inc. v. U.S. Dentek Corp., 116 F. Supp. 2d 604, 608, 56 USPQ2d 1758 (E.D. Pa. 2000); Eli Lilly & Co. v. Natural Answers, Inc., 86 F. Supp. 2d 834, 841 (S.D. Ind.), aff’d 233 F.3d 456, 56 USPQ2d 1942 (7th Cir. 2000).McNeil, 116 F. Supp. 2d at 608.Id.Id.Eli Lilly, 86 F. Supp. 2d at 852.Id. at 841, 852. The court of appeals came to the same conclusion on a similar basis. 233 F.3d at 462.86 F. Supp. 2d at 841.Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. B.E. Windows Corp., 937 F. Supp. 204, 211–12, 40 USPQ2d 1010 (S.D.N.Y. 1996); Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 955 F. Supp. 605, 618–19, 42 USPQ2d 1161 (E.D. Va. 1997), aff’d, 170 F.3d 449, 50 USPQ2d 1065 (4th Cir.), cert. denied, 528 U.S. 923 (1999).B.E. Windows, 937 F. Supp. at 212.Id.Id.Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Division of Travel Development, 955 F. Supp. at 618–19. It should be noted that although the court of appeals affirmed the district court’s conclusion that dilution had not been shown, it expressed “some concern” about the finding of no similarity. 170 F.3d at 463.955 F. Supp. at 619. See Luigino’s, Inc. v. Stouffer Corp., 170 F.3d 827, 832, 50 USPQ2d 1047 (8th Cir. 1999) (Lean N Tasty not similar to Lean Cuisine; “lean” is a descriptive word and “Tasty” is not the same as “Cuisine”).Ringling, 955 F. Supp. at 619 n.27.373 F.3d 786, 71 USPQ2d 1385 (6th Cir. 2004).The Autozone mark was used for automotive parts and supplies. The Powerzone mark was used for a section within a Radio Shack store devoted to power-related items such as batteries, power supplies, and the like. Id. at 789–90.Id. at 806. This statement also incorporates the “actual dilution” standard set forth by the Supreme Court in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 65 USPQ2d 1801 (2003).AutoZone, 373 F.3d at 806 (citing Playboy Enters., Inc. v. Welles, 279 F.3d 796, 806, 61 USPQ2d 1508 (9th Cir. 2002); Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 469, 56 USPQ2d 1942 (2000); Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d 449, 458, 50 USPQ2d 1065 (4th Cir.), cert. denied, 528 U.S. 923 (1999); Luigino’s, Inc. v. Stouffer Corp., 170 F.3d 827, 832, 50 USPQ2d 1047 (8th Cir. 1999); Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 218, 51 USPQ2d 1882 (2d Cir. 1999); I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 50, 49 USPQ2d 1225 (1st Cir. 1998)). The Second Circuit and Ninth Circuit positions on this issue have changed. See above §III.A.Autozone, 373 F.3d at 806–07.CareFirst of Md., Inc. v. First Care, P.C., 434 F.3d 263, 274, 77 USPQ2d 1577 (4th Cir. 2006).561 F. Supp. 2d 368 (S.D.N.Y. 2008).Id. at 390. Given its decision on the confusion claim, it is unlikely that even under the Starbucks standard the court would have upheld the dilution claim.588 F.3d 97, 92 USPQ2d 1769 (2d Cir. 2009).Id. at 107.Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 101 USPQ2d 1212, 1215–16 (S.D.N.Y. 2011).2013 WL 12157828 (D.N.J. Jan. 18, 2013). Id. at *24. Id. Citigroup, Inc. v. Capital City Bank Group, Inc., 94 USPQ2d 1645, 1667 (T.T.A.B. 2010), aff’d on other grounds, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011). National Pork Bd. v. Supreme Lobster & Seafood Co., 96 USPQ2d 1479, 1497 (T.T.A.B. 2010).Nike, Inc. v. Maher, 100 USPQ2d 1018, 1030 (T.T.A.B. 2011); Research in Motion Ltd. v. Defining Presence Marketing Group, Inc., 102 USPQ2d 1187, 1197–98 (T.T.A.B. 2012).Research in Motion, 102 USPQ2d at 1198.Rolex Watch USA, Inc. v. AFP Imaging Corp., 101 USPQ2d 1188, 1195 (T.T.A.B. 2011), vacated, 2013 TTAB LEXIS 46 (T.T.A.B. Jan. 29, 2013) (applicant abandoned the application) (designated precedential July 17, 2013).McNeil Consumer Brands, Inc. v. U.S. Dentek Corp., 116 F. Supp. 2d 604, 608, 56 USPQ2d 1758 (E.D. Pa. 2000); Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 462, 56 USPQ2d 1942 (7th Cir. 2000). See Mead Data Cent., Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026, 1030, 10 USPQ2d 1961 (2d Cir. 1989) (Lexus not substantially similar to Lexis).Visual cues can create dissimilarities in word marks that might otherwise appear similar. See Toro Co. v. ToroHead, Inc., 61 USPQ2d 1164, 1183 (T.T.A.B. 2001) (citing defendant’s use of bull’s head design as creating dissimilarities, despite prominent use of Toro in both marks).American Cyanamid Co. v. Nutraceutical Corp., 54 F. Supp. 2d 379, 387 (D.N.J. 1999).191 F.3d 208, 51 USPQ2d 1882 (2d Cir. 1999).Id. at 213.Id. at 218.Id.Id.Id.60 USPQ2d 2000 (E.D. Pa. 2001).Id. at 2004–05.Id.890 F.3d 747 (9th Cir. 2018). Id. at 758–59. Id. at 757. See id. at 758. Id. 302 F. Supp. 3d 837 (W.D. Ky. 2017). Id. at 898–99. 2012 WL 2304247 (S.D.N.Y. June 18, 2012).Id. at *26 (discussing the Quattro G design).Id. at *27 (discussing the GRG Stripe design).Id. at *28.Id. at *29–31.54 F. Supp. 2d 379 (D.N.J. 1999).Id. at 382–83.Id. at 382. The colored rectangles on the plaintiff’s label were a federally registered trademark. Id.Id. at 383.Id. at 388. The court’s dilution discussion on this point referred to its confusion discussion. Id. at 392.Id. at 393. Here, the court candidly admitted its test was necessarily a “subjective” one.998 F. Supp. 500 (M.D. Pa. 1998).Id. at 502.Id. at 505. The court found the plaintiff’s packaging not to be famous, but did an analysis of blurring assuming it was famous.Id. at 520–21.Id. at 521. See Binney & Smith v. Rose Art Indus., 2000 U.S. Dist. LEXIS 18384, at *23 (E.D. Pa. Dec. 20, 2000) (plaintiff’s dark green chevron on an orange-yellow background found not similar to defendant’s “neon green background” with “a bright yellow oval” on top).998 F. Supp. at 520.Id.Id.117 F. Supp. 2d 360, 56 USPQ2d 1613 (S.D.N.Y. 2000). This case was decided under New York law, but that state also imposes a “substantially similar” requirement. Mead Data Cent., Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026, 1029, 10 USPQ2d 1961 (2d Cir. 1989).868 F. Supp. 2d 207 (S.D.N.Y. 2012).Id. at 248 (discussing the Quattro G design).Id. at 249 (discussing the GRG Stripe design).Id. at 250.Id. at 251–53.Id. at 798.141 F.3d 188, 46 USPQ2d 1737 (5th Cir. 1988).Id. at 201–02. The court of appeals cited many examples of the defendant having featured references to Elvis Presley in advertising and in food served in the bar. Id. at 201.Lanham Act §43(c)(1), 15 U.S.C. §1125(c)(1) (emphasis added). See Best Western Int’l, Inc. v. Doe, 2006 U.S. Dist. LEXIS 77942, at *7–8 (D. Ariz. 2006) (dismissing post-TDRA dilution claim on grounds that defendant’s use was not “in connection with goods or services”). See also Celebrity Chefs Tour, LLC v. Macy’s, Inc., 2014 U.S. Dist. LEXIS 58031, at *12 (S.D. Cal. Apr. 25, 2014) (complaint did not adequately plead that defendant used plaintiff’s mark; claim dismissed without prejudice).Lanham Act §43(c)(2)(B), 15 U.S.C. §1125(c)(2)(B) (emphasis added).Id. §43(c)(2)(C), 15 U.S.C. §1125(c)(2)(C) (emphasis added).Id. §43(c)(5)(A), 15 U.S.C. §1125(c)(5)(A) (emphasis added).For the text of the original bill as introduced, see https://www.bloomberglaw.com/document/X6Q082LC0000OD?documentName=IH&fmt=pdf.See Trademark Dilution Revision Act of 2005: Hearing on H.R. 683 Hearing Before the H. Subcomm. on Courts, the Internet, and Intellectual Property of the Comm. on the Judiciary, 109th Cong. 3–10 (2005) (statement of William G. Barber on behalf of the American Intellectual Property Law Association).Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 430-31, 65 USPQ2d 1801 (2003).Lanham Act §43(c)(1), 15 U.S.C. §1125(c)(1), superseded by the Trademark Dilution Revision Act of 2006.See Chapter 1, §III.D, for a discussion of the Restatement’s dilution provisions. The Restatement was formally issued in 1995, but drafts had been promulgated prior to that.Restatement (Third) of Unfair Competition §25(1).Id. §25(2).Id. §25, cmt. c (“The protection accorded by the law of trademarks is limited to the exploitation of a designation as identifying symbol”); cmt. i (discussing “Non trademark uses”).adidas-America, Inc. v. Payless Shoesource, Inc., 2008 U.S. Dist. LEXIS 69260, at *20–22 (D. Or. 2008) (rejecting defendant’s argument that the markings on its competing shoes were not intended to act as trademarks).671 F.3d 526, 101 USPQ2d 1746 (5th Cir. 2012).Id. at 536.Id. (emphasis added).Allied Interstate, LLC v. Kimmel & Silverman, P.C., 2013 U.S. Dist. LEXIS 113465, at *8–10 (S.D.N.Y. Aug. 12, 2013). Accord American Airlines, Inc. v. Despegar.com USA, Inc., 2013 WL 12064859, at *6 (S.D. Fla. Nov. 13, 2013). But see MJC Am., Ltd. v. Gree Elec. Appliances, Inc. of Zhuhai, 2015 WL 12777382, at *7 (C.D. Cal. Feb. 2, 2015) (plaintiff need not allege that defendant is using “a junior mark”) (quoting Sebastian Int’l, Inc. v. Russolino, 186 F. Supp. 2d 1055, 1070 (C.D. Cal. 2000), a case decided before the TDRA). 451 F. Supp. 3d 373 (E.D. Pa. 2020).Id. at 391.2016 WL 4134495 (C.D. Cal. Aug. 1, 2016). Id. at *3–4. 676 F.3d 144, 102 USPQ2d 1473 (4th Cir. 2012).Id. at 168.Id. at 169.See Playboy Enters., Inc. v. Netscape Commc’ns Corp., 55 F. Supp. 2d 1070, 1088, 52 USPQ2d 1162 (C.D. Cal. 1999); Lyons P’ship v. Giannoulas, 14 F. Supp. 2d 947, 954, 48 USPQ2d 1759 (N.D. Tex. 1998), aff’d, 179 F.3d 384, 51 USPQ2d 1365 (5th Cir. 1999) (no discussion of the issue by the Fifth Circuit); Ford Motor Co. v. Ultra Coachbuilders, Inc., 57 USPQ2d 1356, 1364 (C.D. Cal.), aff’d mem., 238 F.3d 428 (9th Cir. 2000); Ford Motor Co. v. GreatDomains.com, Inc., 177 F. Supp. 2d 635, 654–55, 61 USPQ2d 1718 (E.D. Mich. 2001).Lyons P’ship, 14 F. Supp. 2d at 954.Playboy Enters., 55 F. Supp. 2d at 1088 (citing Restatement (Third) of Unfair Competition §25).Ultra Coachbuilders, 57 USPQ2d at 1364. The court did enjoin the defendant’s use of “Ultra Navigator” as the designation of converted limousines. Id. at 1364–65.189 F.3d 868, 51 USPQ2d 1801 (9th Cir. 1999).Id. at 880.195 F. Supp. 2d 1024 (S.D. Ohio 2001), aff’d, 326 F.3d 687, 66 USPQ2d 1321 (6th Cir. 2003) (the court of appeals did not reach the dilution issues because they were not appealed).Id. at 1033–34. The “post-domain path” refers to the portion of the URL (or Universal Resource Locator) that lies below the domain name. In this case the domain name was www.a2zsolutions.com, and the path in question was http://www.a2zsolutions.com/desks/floors/laptraveler/dkfl-lt.htm. See id. at 1027. But see Google, Inc. v. American Blind & Wallpaper Factory, Inc., 74 USPQ2d 1385, 1389–91 (N.D. Cal. 2005) (denying summary judgment) (opinion designated non-precedential).177 F. Supp. 2d 635, 61 USPQ2d 1718 (E.D. Mich. 2001).Id. at 649.Id. at 649–50.Id. at 655. The court further held that making it more difficult to find plaintiff’s Web site does not satisfy the “goods or services” requirement. Id.315 F.3d 932, 65 USPQ2d 1359 (8th Cir. 2003).Id. at 939. See Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 677–79, 74 USPQ2d 1280 (9th Cir. 2005) (finding no use “in connection with the sale of goods or services” by defendant’s use of www.bosleymedical.com gripe Web site); Taubman Co. v. Webfeats, 319 F.3d 770, 775, 65 USPQ2d 1834 (6th Cir. 2003) (defendant’s Web site—shopsatwillowbend.com—not used “in connection with the sale … or advertising of any goods or services”); Best W. Int’l, Inc. v. Doe, 2006 U.S. Dist. LEXIS 77942, at *7–8 (D. Ariz. 2006) (dismissing post-TDRA dilution claim on grounds that defendant’s use was not “in connection with goods or services”; and citing Bosley); Mashantucket Pequot Tribe v. Redican, 403 F. Supp. 2d 184, 191, 193 (D. Conn. 2005) (foxwoods.com domain name not “use in commerce” for purposes of infringement or dilution). In the infringement context, courts seem to be moving in the direction of holding that a trademark use is not required. E.g., Rescuecom Corp. v. Google, Inc., 562 F.3d 123, 90 USPQ2d 1287 (2d Cir. 2009); Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1145, 97 USPQ2d 2036 (9th Cir. 2011).191 F.3d 208, 51 USPQ2d 1882 (2d Cir. 1999).Id. at 223.Id. The court held that the shape of Nabisco’s crackers was intended to signify “trademark characters” of a television production with which Nabisco had a joint venture. Id.E.g., University of Kan. v. Sinks, 644 F. Supp. 2d 1287 (D. Kan. 2008) (use of plaintiff’s mark on T-shirts).Generic uses are by definition not intended to signify a source; thus, they cannot be classified as trademark uses. Genericide may not be included in the TDRA’s definition of blurring in any case. See above, §II.G.In Jack Daniel’s Prop., Inc. v. VIP Prods. LLC, 599 U.S. 140 (2023), the Court held that the noncommercial use exclusion also does not apply when the use is a trademark use. See Chapter 10 for a discussion of the TDRA exclusions.E.g., William G. Barber, How to Do a Trademark Dilution Survey (or Perhaps How Not to Do One), 89 Trademark Rep. 616, 616–17 (1999).In Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 20851 USPQ2d 1882 (2d Cir. 1999), the court stated that an oft-cited test of dilution omitted the following relevant factors:actual confusion and likelihood of confusion, shared consumers and geographic isolation, the adjectival quality of the junior use, and the interrelated factors of duration of the junior use, harm to the junior user, and delay by the senior in bringing the action.Id. at 228. The cited test came from Mead Data Cent., Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026, 1035, 10 USPQ2d 1961 (2d Cir. 1989) (Sweet, J., concurring). See also Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 468–69, 56 USPQ2d 1942 (7th Cir. 2000). Once the Supreme Court required a showing of actual dilution, Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 433, 65 USPQ2d 1801 (2003), it became clear that evidence of dilution would be critical. After the TDRA, such direct evidence is not as critical. However, any such evidence clearly would be highly relevant.Lanham Act §43(c)(2)(B)(vi), 15 U.S.C. §1125(c)(2)(B)(vi).For a discussion of the types of evidence needed to prove dilution, see generally J. Thomas McCarthy, Proving a Trademark Has Been Diluted: Theories or Facts? 41 Hous. L. Rev. 713 (2004). It should not be forgotten that evidence—particularly survey evidence—may also be critical to proving that a mark is famous. Demonstrating that a mark is “widely recognized by the general consuming public” may prove difficult in some cases without a survey. Much of the discussion in §V.C., below, concerning surveys, particularly methodological issues, would also be relevant to surveys used to demonstrate fame. However, courts have held that surveys are not required to prove dilution. E.g., Diageo N. Amer., Inc. v. W.J. Deutsch & Sons Ltd., 626 F. Supp. 3d 635, 646 (S.D.N.Y. 2022).E.g., Chicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1265, 58 USPQ2d 1881 (9th Cir. 2001); Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 400, 5 USPQ2d 1314 (8th Cir. 1987), cert. denied, 488 U.S. 933 (1988); Piper Aircraft Corp. v. Wag-Aero, Inc., 741 F.2d 925, 935, 223 USPQ 202 (7th Cir. 1984); Big O Tires, Inc. v. Bigfoot 4x4, Inc., 167 F. Supp. 2d 1216, 1225 (D. Colo. 2001). Whether surveys should be considered “actual” evidence of confusion may be disputed. See generally Peter Weiss, The Use of Survey Evidence in Trademark Litigation: Science, Art or Confidence Game?, 80 Trademark Rep. 71 (1990).National Pork Bd. v. Supreme Lobster & Seafood Co., 96 USPQ2d 1479, 1496 (T.T.A.B. 2010) (discussing awareness evidence); I.P. Lund Trading ApS v. Kohler Co., 118 F. Supp. 2d 92, 105–10, 56 USPQ2d 1776 (D. Mass. 2000); Syndicate Sales, Inc. v. Hampshire Paper Corp., 2000 WL 1428665, at *12–16 (S.D. Ind. Aug. 30, 2000). Only famous marks are protected by the TDRA. 15 U.S.C. §1125(c)(1) (“the owner of a famous mark … shall be entitled . . .”) (emphasis added). This subject is discussed in Chapter 8.40 USPQ2d 1629 (E.D. Pa. 1996), aff’d mem., 116 F.3d 471 (3d Cir. 1997).Id. at 1632.The Wawa case does not give details of the survey. These details came from a Practicing Law Institute publication. Gerald L. Ford, Dilution Surveys Update 1998, 537 PLI/Pat. 551, 559 (1998).Pharmacia Corp. v. Alcon Labs., Inc., 201 F. Supp. 2d 335, 380–81 (D.N.J. 2002). The precise purpose of this survey is somewhat unclear. It appears that it was introduced to demonstrate confusion as well as dilution. In Kellogg Co. v. Toucan Golf, Inc., 337 F.3d 616, 628, 67 USPQ2d 1481, 1488 (6th Cir. 2003), the court affirmed a dismissal of an opposition to a registration, noting that, with respect to a dilution claim, Kellogg’s studies showed no loss of recognition of the Toucan Sam mark, and no evidence of any loss of association of the Toucan Sam mark with Froot Loops cereal.Pharmacia, 201 F. Supp. 2d at 380.Visa Int’l Serv. Ass’n v. JSL Corp., 590 F. Supp. 2d 1306, 1318–19 (D. Nev. 2008), aff’d, 610 F.3d 1088, 95 USPQ2d 1571 (9th Cir. 2010). Although the court noted that there was no evidence of bad faith or intent to trade on plaintiff’s reputation, nor was there evidence of exclusive use of the Visa mark by plaintiff; the other factors weighed strongly in favor of a finding of dilution.192 F. Supp. 2d 790, 59 USPQ2d 1551 (W.D. Tenn. 2001).See id. at 806 & n.9. Kellogg’s concession may have reflected the fact that, although Kellogg was the senior user of a tiger mark, Exxon had used a tiger mark for over 30 years and even had registered it with the Patent and Trademark Office. See id. at 794–95. This raises an issue of retroactivity, discussed in Chapter 10, §IX.Id. at 806.Id. It should be noted that the court did not rule on whether the survey demonstrated dilution. It assumed that it did for purposes of the motion. Id. Whether calling to mind another source should be sufficient evidence of dilution is a question raised in other cases.Id. at 807.Id.Id. (quoting from a Kellogg memorandum submitted in opposition to the summary judgment motion).Id. at 807–08.Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 955 F. Supp. 605, 617–18, 42 USPQ2d 1161 (E.D. Va. 1997), aff’d, 170 F.3d 449, 50 USPQ2d 1065 (4th Cir.), cert. denied, 528 U.S. 923 (1999); Hershey Foods Corp. v. Mars, Inc., 998 F. Supp. 500, 519 (M.D. Pa. 1998).955 F. Supp. 605, 617–18, 42 USPQ2d 1161 (E.D. Va. 1997), aff’d, 170 F.3d 449, 50 USPQ2d 1065 (4th Cir.), cert. denied, 528 U.S. 923 (1999).Id. at 612. As a control, the survey also asked respondents to fill in “I Love ___” and “Don’t Leave ___ Without It.” Id.The defendant, the Utah Division of Travel and Development, had used the phrase “Greatest Snow on Earth” in advertisements for Utah tourism sites, primarily directed at out-of-state tourists. Id. at 610–11.Id. at 612.Id. at 612–13.Id. at 617–18.Id. at 617.Id.Id. Indeed, one could argue that the survey indicates that Utah’s advertising had increased Ringling’s brand recognition, since more Utahans than non-Utahans filled in the blank with the word “Show”: 46% to 41%.Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 433–34, 65 USPQ2d 1801 (2003).CareFirst of Md., Inc. v. First Care, P.C., 434 F.3d 263, 274–75, 77 USPQ2d 1577 (4th Cir. 2006). The court also cited its Ringling decision in a comparative manner, noting that Ringling had rejected a mental association survey as insufficient to show dilution. Id. This result may continue after the TDRA, which also does not clearly equate confusion with dilution.Louis Vuitton Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558, 597 (S.D.N.Y. 2007).Edina Realty, Inc. v. TheMLSonline.com, 80 USPQ2d 1039, 1045 (D. Minn. 2006). See also American Registry of Radiologic Technologists v. Garza, 2006 U.S. Dist. LEXIS 29826, at *15–17 (S.D. Tex. 2006) (no actual dilution found).998 F. Supp. 500 (M.D. Pa. 1998).Id. at 509. The plaintiff produced Reese’s peanut butter cups, whose trade dress was the focal point of the suit. The defendant produced M&Ms, whose introduction of peanut-flavored M&Ms in packages using colors similar to those on Reese’s packages precipitated the suit.Id. at 510. Some respondents were shown the representation of the plaintiff’s trade dress, while others were shown the defendant’s trade dress. All were shown the controls. Id.Id. at 517–18.Id. at 518.Id. The survey packages substituted “Brand X” for the brand names. Id.Id.Id.Id.Id. This is not an entirely satisfactory answer. The survey design does not appear to account for a dual source response, for example.Id. at 519.Id. The court cited the elimination of the “cascading M&Ms” that appear on the actual package as a notable exclusion. Id.Id. The court also rejected a second survey, primarily on the grounds that it had not been introduced in the plaintiff’s main case, but on rebuttal. Id. The second survey was not limited to particular candy consumers and did not use the same misleading elements. However, it was described as a “pilot” survey and only questioned about 90 people. Id. at 511. The main survey had 162 respondents. Gerald L. Ford, Dilution Surveys Update 1998, 537 PLI/Pat. at 573.57 F. Supp. 2d 665 (E.D. Wis. 1999).Id. at 669.Id. at 669–71.For further discussion of survey pitfalls, see below, §V.C.2.101 USPQ2d 1212 (S.D.N.Y. 2011).Id. at 1216.Id. The Second Circuit reaffirmed this finding on a subsequent appeal after remand. 736 F.3d 198, 209–11, 108 USPQ2d 1581 (2d Cir. 2013). Other parts of the survey showed considerably less association. Id. A similar result occurred in Casa Tradicion S.A. de C.V. v. Casa Azul Spirits LLC, 2023 WL 7284182, at *5 (S.D. Tex. Nov. 3, 2023), where the court excluded a survey because it did not show the context of the marks.2013 WL 12157828 (D.N.J. Jan. 18, 2013). Id. at *26–27. Id. at *27. 25 F. Supp. 3d 865, 111 USPQ2d 1863 (E.D. Va. 2014), vacated and remanded, 786 F.3d 316, 114 USPQ2d 1772 (4th Cir. 2015). Id. at 895–96. Id. at 895–96 & n.64. Id. at 896 n.64. 786 F.3d 316, 331–32, 114 USPQ2d 1772 (4th Cir. 2015). 302 F. Supp. 3d 837 (W.D. Ky. 2017). Id. at 873. Id. at 900. Although fame is clearly to be measured by the “general consuming public,” the statute is silent as to the relevant group to be measured for a loss of distinctiveness. 291 F. Supp. 3d 891 (D. Ariz. 2018), rev’d in part, vacated in part, 953 F.3d 1170 (9th Cir. 2020), vacated and remanded, 599 U.S. 140 (2023). Id. at 902–03. Id. at 903–04. The court reiterated this conclusion when the case was remanded from the Supreme Court . VIP Prods. LLC v. Jack Daniel’s Props., Inc., 2025 WL 275909, at *7(D. Ariz. Jan 21, 2025).VIP Prods. LLC v. Jack Daniel’s Props., Inc., 2025 WL 275909, at *6, 2025 BL 21521 (D. Ariz. Jan 21, 2025) (crediting the expert’s testimony at a bench trial); Gucci Am., Inc. v. Guess?, Inc., 102 USPQ2d 1615, 1627–28 (S.D.N.Y. 2012). However, in a later opinion in the case, after a bench trial, the Gucci court concluded that the expert’s testimony did not establish likelihood of dilution. Gucci Am., Inc. v. Guess?, Inc., 868 F. Supp. 2d 207, 233 (S.D.N.Y. 2012).2025 WL 275909, 2025 BL 21521 (D. Ariz. Jan. 21, 2025).Id. at *6. By contrast, the court refused to credit VIP’s expert, who conducted focus groups, on the grounds that the manner in which the groups were conducted was biased. Id. at *7 (noting that the expert had told the groups that the product in question was a “spoof” product).Prophet Capital Mgmt., Ltd. v. Prophet Equity, LLC, 2010 WL 11506410, at *3 (W.D. Tex. Oct. 28, 2010). E.g., Visa Int’l Serv. Ass’n v. JSL Corp., 610 F.3d 1088, 1091, 95 USPQ2d 1571 (9th Cir. 2010). See Hershey Co. v. Art Van Furniture, Inc., 2008 WL 4724756, at *15 (E.D. Mich. Oct. 24, 2008) (finding “reasonable likelihood” of showing dilution, even in the absence of evidence of association, where there was intent to cause an association).Nissan Motor Co., Ltd. v. Nissan Computer Corp., 2007 U.S. Dist. LEXIS 90487, at *48–49 (C.D. Cal. 2007).University of Kan. v. Sinks, 644 F. Supp. 2d 1287, 1294 (D. Kan. 2008).See cases cited in Patrick M. Bible, Defining and Quantifying Dilution under the Federal Trademark Dilution Act of 1995: Using Survey Evidence to Show Actual Dilution, 70 U. Colo. L. Rev. 295, 317 n.112 (1999).E.g., Beebe, et al., Testing for Dilution, supra note NOTEREF _Ref43544975 \h 58; Maureen Morrin & Jacob Jacoby, Trademark Dilution: Empirical Measures for an Elusive Concept, 19 J. Pub. Pol’y & Marketing 265 (2000); Bible, id.; William G. Barber, How to Do a Trademark Dilution Survey (or Perhaps How Not to Do One), 89 Trademark Rep. 616 (1999); 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); Steve Hartman, Brand Equity Impairment—The Meaning of Dilution, 87 Trademark Rep. 418 (1997); Alexander F. Simonson, Dilution Law: At the Crossroads? How and When do Trademarks Dilute: A Behavioral Framework to Judge “Likelihood” of Dilution, 83 Trademark Rep. 149 (1993).I note here that this discussion pertains to surveys purporting to demonstrate likelihood of dilution. Litigants may conduct surveys to show brand recognition to demonstrate fame. This is discussed in Chapters 8 and 13.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, 237 (1999).Moseley, 537 U.S. at 433–34. There may be one instance where mental association would be enough: where the offending use is identical to the famous mark. Id. at 434. See also CareFirst of Md., Inc. v. First Care, P.C., 434 F.3d 263, 274–75, 77 USPQ2d 1577 (4th Cir. 2006) (rejecting a confusion survey as irrelevant to dilution and noting in passing that a mental association survey would not be sufficient). But see V Secret Catalogue, Inc. v. Moseley, 605 F.3d 382, 388–89, 95 USPQ2d 1050 (6th Cir. 2010) (mental association with sexually oriented use creates presumption of tarnishment), cert. denied, 131 S. Ct. 1003 (2011).Moseley, 537 U.S. at 434 (discussing observations of a witness in the case and concluding that the facts did not demonstrate dilution). See Kellogg Co., 337 F.3d at 628, 67 USPQ2d at 1488 (mental association with famous mark on seeing junior mark not sufficient under Moseley); Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 2004 WL 2158120, at *8 (S.D.N.Y. Sep. 28, 2004) (same). Because Moseley imposed an actual dilution standard on the original FTDA, cases not involving identical marks would have to have had evidence of actual dilution, which would be more than just a mental association. It may have necessitated a second survey showing the difference between consumer reactions to the mark before and after the allegedly diluting mark was used. However, evidence of a mental association probably would have been admissible as relevant, even if it was not sufficient. See Playtex Prods., Inc. v. Georgia-Pacific Corp., 390 F.3d 158, 168, 73 USPQ2d 1127 (2d Cir. 2004) (survey indicating mental association not sufficient to show actual dilution); Starbucks Corp., 2004 WL 2158120, at *8 (survey showing that 31% of respondents made mental association, and 43% of respondents thought Charbucks gave them negative impression of Starbucks not sufficient for summary judgment). In a subsequent opinion in the Starbucks case, the court again rejected the plaintiff’s survey evidence as insufficient to demonstrate tarnishment, and granted judgment for defendant. Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 79 USPQ2d 1138, 1145, 2005 WL 3527126, at *9 (S.D.N.Y. 2005), vacated and remanded, 477 F.3d 765, 81 USPQ2d 1927 (2d Cir. 2007) (vacated for consideration of effect of the TDRA).See Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 109, 92 USPQ2d 1769 (2d Cir. 2009) (remanding to district court with instructions to consider plaintiff’s association survey); Gucci Am., Inc. v. Guess?, Inc., 831 F. Supp. 2d 723, 739 n.88, 102 USPQ2d 1225 (S.D.N.Y. Nov. 16, 2011) (rejecting argument that association survey is irrelevant); Nike, Inc. v. Nikepal Int’l, Inc., 84 USPQ2d 1820, 1828 (E.D. Cal. 2007) (using association survey results). Cf. National Pork Bd. v. Supreme Lobster & Seafood Co., 96 USPQ2d 1479, 1498 n.36 (T.T.A.B. 2010) (declining to use survey for “actual association” because the offending mark had not yet been used).The study by Morrin and Jacoby attempts to measure whether the presence of the diluting use weakens the association between the famous mark and the product category for which it is famous. Maureen Morrin & Jacob Jacoby, Trademark Dilution: Empirical Measures for an Elusive Concept, 19 J. Pub. Pol’y & Marketing 265 (2000). For a more recent discussion of measuring dilution empirically, see generally Julie Manning Magid, Anthony D. Cox, & Dena S. Cox, Quantifying Brand Image: Empirical Evidence of Trademark Dilution, 43 Am. Bus. L.J. 1 (2006). The use of brand association surveys to measure dilution is critiqued in Beebe, et al., Testing for Dilution, supra note NOTEREF _Ref43544975 \h 58, at 621–34.But cf. Mattel, Inc. v. MCA Records, Inc., 28 F. Supp. 2d 1120, 1155 n.55 (C.D. Cal. 1998) (rejecting confusion survey in dilution case), aff’d on other grounds, 296 F.3d 894, 63 USPQ2d 1715 (9th Cir. 2002), cert. denied, 537 U.S. 1171 (2003).See Apple, Inc. v. Samsung Elecs. Co., 2012 U.S. Dist. LEXIS 90877, at *22–23 (N.D. Cal. June 29, 2012) (rejecting a survey negating confusion as irrelevant to dilution claim).Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d 449, 458, 461, 50 USPQ2d 1065 (4th Cir.), cert. denied, 528 U.S. 923 (1999).See Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 433, 65 USPQ2d 1801 (2003) (rejecting need for actual economic harm).See discussion in §II.D.1, above.See Steve Hartman, Brand Equity Impairment—The Meaning of Dilution, 87 Trademark Rep. 418, 419 (1997).See Rebecca Tushnet, Gone in Sixty Milliseconds: Trademark Law and Cognitive Science, 86 Tex. L. Rev. 507, 527–46 (2008) (discussing and critiquing various studies).William G. Barber, How to Do a Trademark Dilution Survey (or Perhaps How Not to Do One), 89 Trademark Rep. 616, 629–31 (1999); Patrick M. Bible, Defining and Quantifying Dilution under the Federal Trademark Dilution Act of 1995: Using Survey Evidence to Show Actual Dilution, 70 U. Colo. L. Rev. 295, 331–32 (1999). It is worth noting that the survey accepted in Wawa, Inc. v. Haaf, 40 USPQ2d 1629 (E.D. Pa. 1996), aff’d mem., 116 F.3d 471 (3d Cir. 1997), was not a comparison survey.Patrick M. Bible, Defining and Quantifying Dilution under the Federal Trademark Dilution Act of 1995: Using Survey Evidence to Show Actual Dilution, 70 U. Colo. L. Rev. 295, 331–32 (1999); William G. Barber, How to Do a Trademark Dilution Survey (or Perhaps How Not to Do One), 89 Trademark Rep. 616, 629–31 (1999). See National Football League Properties, Inc. v. Prostyle, Inc., 57 F. Supp. 2d 665, 669–71 (E.D. Wis. 1999) (rejecting survey, noting lack of control). See generally Maureen Morrin & Jacob Jacoby, Trademark Dilution: Empirical Measures for an Elusive Concept, 19 J. Pub. Pol’y & Marketing 265 (2000) (using control group in their study of dilution).Patrick M. Bible, Defining and Quantifying Dilution under the Federal Trademark Dilution Act of 1995: Using Survey Evidence to Show Actual Dilution, 70 U. Colo. L. Rev. 295, 332 (1999); William G. Barber, How to Do a Trademark Dilution Survey (or Perhaps How Not to Do One), 89 Trademark Rep. 616, 630–31 (1999).Undoubtedly, this would be expensive. But the value of keeping a famous mark unblemished should be worth the expense.See generally Maureen Morrin & Jacob Jacoby, Trademark Dilution: Empirical Measures for an Elusive Concept, 19 J. Pub. Pol’y & Marketing 265 (2000).Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 736 F.3d 198, 209–11, 108 USPQ2d 1581 (2d Cir. 2013). Hershey Co. v. Promotion in Motion, Inc., 2013 WL 12157828, at *26–27 (D.N.J. Jan. 18, 2013). See generally Morrin & Jacoby, supra note NOTEREF _Ref43546927 \h 972. It should be noted that several of Mr. Jacoby’s surveys have been criticized and/or rejected in trademark cases. See National Football League, 57 F. Supp. 2d at 667 (citing cases).Maureen Morrin & Jacob Jacoby, Trademark Dilution: Empirical Measures for an Elusive Concept, 19 J. Pub. Pol’y & Marketing 265, 268, 270 (2000).Id. at 271, 272.Id. at 271, 273–74.Id. at 274.The article by Beebe, et al., concludes that dilution by blurring may be a “chimera” and that testing for actual dilution may be a fruitless effort. Beebe et al., Testing for Dilution, supra note NOTEREF _Ref43544975 \h 58, at 662.E.g., Apple, Inc. v. Samsung Elecs. Co., 2012 U.S. Dist. LEXIS 90877, at *24–26 (N.D. Cal. June 29, 2012); Gucci Am., Inc. v. Guess?, Inc., 831 F. Supp. 2d 723, 102 USPQ2d 1225, 2011 U.S. Dist. LEXIS 132706, at *32 (S.D.N.Y. Nov. 16, 2011); Ne Opco, Inc. v. American Pad & Paper Co., 2011 U.S. Dist. LEXIS 45231, at *6 (S.D.N.Y. Apr. 25, 2011); Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302, 1322, 86 USPQ2d 1835 (N.D. Ga. 2008); Board of Regents, Univ. of Tex. Sys. v. KST Elec., Ltd., 2007 U.S. Dist. LEXIS 96129, at *7 (W.D. Tex. 2007).509 U.S. 579, 593–94, 27 USPQ2d 1200 (1993).57 F. Supp. 2d 665 (E.D. Wis. 1999).Id. at 673 (quoting Holbrook v. Lykes Bros. S.S. Co., 80 F.3d 777, 784 (3d Cir. 1996)).Those factors include: “whether the [survey expert’s] ‘theory or technique … can be (and has been) tested’; whether it ‘has been subjected to peer review and publication’; whether there is a high ‘known or potential rate of error’ and whether there are ‘standards controlling the technique’s operation’; and whether the theory or technique enjoys ‘general acceptance’ within a ‘relevant scientific community.’” Id. at 668 (quoting Daubert, 509 U.S. at 593–94). See Sears, Roebuck & Co. v. Menard, Inc., 72 USPQ2d 1221, 1224 (N.D. Ill. 2003) (infringement case, citing Daubert and ultimately rejecting a confusion survey).Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302, 1334, 86 USPQ2d 1835 (N.D. Ga. 2008); Louis Vuitton Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558, 563 (S.D.N.Y. 2007); Board of Regents, Univ. of Tex. Sys. v. KST Elec., Ltd., 2007 U.S. Dist. LEXIS 96129, at *7 (W.D. Tex. Oct. 19, 2007); Hodgdon Powder Co. v. Alliant Techsystems, Inc., 512 F. Supp. 2d 1178, 1180 (D. Kan. 2007); University of Kan. v. Sinks, 2008 U.S. Dist. LEXIS 23763, at *3–5 (D. Kan. Mar. 19, 2008).See Dooney & Bourke, 525 F. Supp. 2d at 609–11 (rejecting dilution survey); Mattel, Inc. v. MCA Records, Inc., 28 F. Supp. 2d 1120, 1155 n.55 (C.D. Cal. 1998) (rejecting confusion survey for dilution claim), aff’d on other grounds, 296 F.3d 894, 63 USPQ2d 1715 (9th Cir. 2002), cert. denied, 537 U.S. 1171 (2003).See National Pork Bd. v. Supreme Lobster & Seafood Co., 96 USPQ2d 1479, 1490–92 (T.T.A.B. 2010) (allowing association survey into evidence, although ultimately not using it to measure actual association for blurring). Cf. Starbucks Corp. v. Lundberg, 2005 U.S. Dist. LEXIS 46167 (D. Or. May 25, 2005) (ruling on survey evidence of brand association under Oregon law).See Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d 449, 463, 50 USPQ2d 1065 (4th Cir.) (using actual dilution standard under original FTDA, rejecting “calling to mind” as insufficient), cert. denied, 528 U.S. 923 (1999).NFL Properties, 57 F. Supp. 2d at 669–71. See Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302, 1330–31 (N.D. Ga. 2008) (discussing need for double blind survey).See Hodgdon Powder, 512 F. Supp. 2d at 1181; Smith, 537 F. Supp. 2d at 1326–27 (survey universe criticized for being overinclusive); Westchester Media Co. L.P. v. PRL USA Holdings, Inc., 103 F. Supp. 2d 935, 965–66 (S.D. Tex. 1999), aff’d, 214 F.3d 658, 55 USPQ2d 1225 (5th Cir. 2000); see Nike, Inc. v. Nikepal Int’l, Inc., 2007 U.S. Dist. LEXIS 16966, at *13–15 (E.D. Cal. Feb. 27, 2007) (though survey deemed relevant, court denied summary judgment and noted that possible flaws in plaintiff’s survey, especially as to relevant respondents, created issue of fact).NFL Properties, 57 F. Supp. 2d at 668.Hodgdon Powder, 512 F. Supp. 2d at 1181; Smith, 527 F. Supp. 2d at 1331–32.Id. See Gucci Am., Inc. v. Guess?, Inc., 831 F. Supp. 2d 723, 738, 102 USPQ2d 1225, (S.D.N.Y. 2011); Dooney & Bourke, 525 F. Supp. 2d at 611–12.NFL Properties, 57 F. Supp. 2d at 672–73. See University of Kan. v. Sinks, 2008 U.S. Dist. LEXIS 23763, at *27–29 (D. Kan. Mar. 19, 2008) (faulting survey for relying more on expert’s personal opinion than actual research); Smith, 537 F. Supp. 2d at 1325 n.23 (expert may not rely on what is “conventional wisdom” in the industry).See Fed. R. Civ. P. 26(a)(2), (b)(4).NFL Properties, 57 F. Supp. 2d at 671.See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164–65, 34 USPQ2d 1161 (1995) (discussing functionality); W.T. Rogers Co. v. Keene, 778 F.2d 334, 337, 228 USPQ 145 (7th Cir. 1985) (discussing likelihood of confusion). See also I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 38, 49 USPQ2d 1225 (1st Cir. 1998) (discussing functionality).Courts have permitted patented articles to claim trademark protection as well. E.g., Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277, 289, 46 USPQ2d 1026 (7th Cir.), cert. denied, 525 U.S. 929 (1998); Application of Mogen David Wine Corp., 328 F.2d 925, 140 USPQ 575 (C.C.P.A. 1964); Apple, Inc. v. Samsung Elecs. Co., 2012 WL 2571719, at *1, 2–3 (N.D. Cal. June 30, 2012) (claims included patent infringement and trade dress infringement and dilution); In re Visual Commc’ns Co., 51 USPQ2d 1141 (T.T.A.B. 1999).See Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 51 USPQ2d 1882 (2d Cir. 1999) (applying the FTDA to the shape of crackers).15 U.S.C. §1127 (definition of mark).Trademarks identify goods, while service marks identify services. Collective and certification marks serve special purposes which can be ignored for this discussion.15 U.S.C. §1127 (definition of trademark).See, e.g., I.P. Lund, 163 F.3d at 45–46; Apple, Inc. v. Samsung Elecs. Co., 2012 WL 2571719, at *2–3; Syndicate Sales, Inc. v. Hampshire Paper Corp., 2000 WL 1428665, at *9–10 (S.D. Ind. Aug. 30, 2000).E.g., Sunbeam Prods., Inc. v. West Bend Co., 123 F.3d 246, 44 USPQ2d 1161 (5th Cir. 1997); Insty*Bit, Inc. v. Poly-Tech Indus., Inc., 95 F.3d 663, 39 USPQ2d 1961 (8th Cir. 1996), cert. denied, 519 U.S. 1151 (1997); Le Sportsac, Inc. v. K Mart Corp., 754 F.2d 71, 225 USPQ 654 (2d Cir. 1985); W.T. Rogers Co. v. Keene, 778 F.2d 334, 228 USPQ 145 (7th Cir. 1985).In DO Denim LLC v. Fried Denim, Inc., 634 F. Supp. 2d 403, 408, 91 USPQ2d 1589 (S.D.N.Y. 2009), the court dismissed a dilution claim because it pleaded non-functionality only in a conclusory fashion.Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d 449, 464, 50 USPQ2d 1065 (4th Cir.), cert. denied, 528 U.S. 923 (1999).Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 65 USPQ2d 1801 (2003).Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 228, 51 USPQ2d 1882 (2d Cir. 1999).Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 469, 56 USPQ2d 1942 (7th Cir. 2000).Mead Data Cent., Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026, 1035, 10 USPQ2d 1961 (2d Cir. 1989) (Sweet, J., concurring).Lanham Act §43(c)(7), 15 U.S.C. §1125(c)(7).The most significant post-TDRA trade dress case to date is Apple, Inc. v. Samsung Electronics Co., 920 F. Supp. 2d 1079 (N.D. Cal. 2013), where the court upheld a substantial jury award in favor of Apple based on patent infringement and trademark dilution. Id. at 1095–98 (discussing dilution claims). The Federal Circuit described Apple’s claimed protected iPhone trade dresses as follows:These two trade dresses protect the overall visual impression of the non-functional elements of the iPhone’s front face, including: (i) a rectangular product with four evenly rounded corners; (ii) a flat clear surface covering the front of the product; (iii) the appearance of a metallic bezel around the flat clear surface; (iv) a display screen under the clear surface; (v) under the clear surface, substantial black borders above and below the display screen and narrower black borders on either side of the screen; (vi) when the device is on, a row of small dots on the display screen; (vii) when the device is on, a matrix of colorful square icons with evenly rounded corners within the display screen; and (viii) when the device is on, a bottom dock of colorful square icons with evenly rounded corners set off from the other icons on the display, which does not change as other pages of the user interface are viewed.Apple, Inc. v. Samsung Elecs. Co., 735 F.3d 1352, 1358, 108 USPQ2d 1833 (Fed. Cir. 2013). In a later appeal, the Federal Circuit reversed the portion of a jury verdict that found dilution of Apple’s trade dress on the grounds that the trade dress was functional. 786 F.3d 983, 114 USPQ2d 1953 (Fed. Cir. 2015). This decision is discussed further in §VI.C.1. of this chapter. A few other cases have applied the TDRA to trade dress. E.g., adidas-America, Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029, 1062–63 (D. Or. 2008); Hershey Co. v. Art Van Furniture, Inc., 2008 WL 4724756 (E.D. Mich. Oct. 24, 2008). The adidas case was a true product configuration case, but its analysis was complicated by the fact that the court applied the original FTDA to the part of the claim asserting damages. If the configurations are not particularly similar, then dilution is very unlikely. In Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 434, 65 USPQ2d 1801 (2003), the Supreme Court indicated that the use of an identical mark by the second user could constitute evidence of dilution. However, such a simplistic solution would make it very easy to prove dilution in such cases and may unnecessarily cause conflicts with the policy of the patent laws. Therefore, applying such a test in product configuration cases seems unwarranted.In Apple, Inc. v. Samsung Electronics Co., 920 F. Supp. 2d 1079 (N.D. Cal. 2013), aff’d in part, rev’d in part on other grounds, 786 F.3d 983, 114 USPQ2d 1953 (Fed. Cir. 2015) (the Federal Circuit found the trade dress functional and did not discuss dilution), rev’d on other grounds, 137 S. Ct. 429, 120 USPQ2d 1749 (2016), the district court cited Samsung’s intent to copy Apple’s product design as a factor in Apple’s favor. Id. at 1098. Indeed, copying was cited as a justification for a finding that Samsung’s dilution was a “willful intent to trade on the reputation” of Apple’s design. Id. See Wallace Int’l Silversmiths, Inc. v. Godinger Silver Art Co., 916 F.2d 76, 81, 16 USPQ2d 1555 (2d Cir. 1990), cert. denied, 499 U.S. 976 (1991).See Ferrari S.P.A. Esercizio v. Roberts, 944 F.2d 1235, 1245, 20 USPQ2d 1001 (6th Cir. 1991) (arguing that a kit for converting other cars into a car resembling a Ferrari would harm the image of the real Ferrari), cert. denied, 505 U.S. 1219 (1992).61 F. Supp. 2d 700 (N.D. Ohio 1999).Id. at 718.Id. See also Ford Motor Co. v. Lloyd Design Corp., 184 F. Supp. 2d 665, 677, 62 USPQ2d 1109 (E.D. Mich. 2002) (alluding to the possibility of inferior goods in finding confusion between plaintiff’s and defendant’s floor mats, though not describing it as tarnishment). But cf. Sony Computer Entm’t, Inc. v. Connectix Corp., 203 F.3d 596, 609 (9th Cir.) (rejecting tarnishment claim regarding computer entertainment devices, finding no evidence of a distinct difference in quality of play), cert. denied, 531 U.S. 871 (2000). 744 F. Supp. 3d 894 (D. Minn. 2024). Id. at 905.However, in most such cases, one would expect confusion to be the stronger point.See TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29, 58 USPQ2d 1001 (2001); Lanham Act §2(e)(5), 15 U.S.C. §1052(e)(5) (functionality precludes registration); Lanham Act §33(b)(8), 15 U.S.C. 1115(b)(8) (functionality a defense to incontestability).See, e.g., Apple, Inc. v. Samsung Elecs. Co., 920 F. Supp. 2d 1116, 1123–26 (N.D. Cal. 2013) (discussing functionality), aff’d in part, rev’d in part, 786 F.3d 983, 114 USPQ2d 1953 (Fed. Cir. 2015) (the Federal Circuit held that the trade dress was functional), rev’d on other grounds, 137 S. Ct. 429, 120 USPQ2d 1749 (2016); I.P. Lund Trading ApS v. Kohler Co., 118 F. Supp. 2d 92, 99, 56 USPQ2d 1776 (D. Mass. 2000) (trade dress protection for product configuration requires nonfunctionality).See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 34 USPQ2d 1161 (1995); I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 37, 49 USPQ2d 1225 (1st Cir. 1998). In TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001), the Court indicated that the interest in effective competition may be confined to cases of “aesthetic” functionality. Id. at 32–33. See Groeneveld Transp. Efficiency, Inc. v. Lubecore Int’l, Inc., 730 F.3d 494, 506–07, 108 USPQ2d 1022 (6th Cir. 2013) (TrafFix holds that one need not consider alternative designs when determining functionality).See Lubecore, 730 F.3d at 508 (“the public policy underlying the functionality doctrine … is to channel the legal protection of useful designs from the realm of trademark to that of patent”).See L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir.), cert. denied, 510 U.S. 908 (1993).See Wallace Int’l Silversmiths, Inc. v. Godinger Silver Art Co., 916 F.2d 76, 79, 16 USPQ2d 1555 (2d Cir. 1990), cert. denied, 499 U.S. 976 (1991).Id. at 81. See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165–66, 34 USPQ2d 1161 (1995).See, e.g., Apple, Inc. v. Samsung Elecs. Co., 2012 WL 2571719, at *5–6 (N.D. Cal. June 30, 2012) (designs are aesthetically functional “[w]hen goods are bought largely for their aesthetic value” (quoting Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1068, 80 USPQ2d 1293 (9th Cir. 2006))); Ford Motor Co. v. Lloyd Design Corp., 184 F. Supp. 2d 665, 673–77, 62 USPQ2d 1109 (E.D. Mich. 2002) (rejecting claim of aesthetic functionality in a case involving both confusion and dilution); Erin M. Harriman, Aesthetic Functionality: The Disarray Among Modern Courts, 86 Trademark Rep. 276 (1996); William D. Coston, Wal-Mart Stores, Inc. v. Samara Bros., Inc.: The Triumph of Consumer Protection in Lanham Act Litigation, 90 Trademark Rep. 572, 580 (2000) (asserting that prior to the Wal-Mart decision the PTO and TTAB had treated it as a nonviable doctrine); Jerre B. Swann, The Configuration Quagmire: Is Protection Anticompetitive or Beneficial to Consumers, and the Need to Synthesize Extremes, 87 Trademark Rep. 253, 255 (1997).See David S. Welkowitz, Trade Dress and Patent—The Dilemma of Confusion, 30 Rutgers L.J. 289, 339–41 (1999).786 F.3d 983, 114 USPQ2d 1953 (Fed. Cir. 2015), rev’d on other grounds, 137 S. Ct. 429, 120 USPQ2d 1749 (2016). Id. at 989. Id. at 990. Id. at 991–92. Id. at 992. Id. (quoting Disc Golf Ass’n v. Champion Discs, Inc., 158 F.3d 1002, 1007 (9th Cir. 1998)). Id. at 993. Id. at 993–94. Id. at 994–95. Id. at 995. Id. at 995–96. Id. at 996. 2025 WL 947543, 2025 BL 104783 (D. Nev. Mar. 28, 2025).Id. at *2–3.Compare 15 U.S.C. §1125(c)(1) with former 15 U.S.C. §1125(c)(1) (superseded by the Trademark Dilution Revision Act of 2006) (setting forth factors to determine whether a mark is “distinctive and famous”).The Second Circuit had required a separate showing of distinctiveness as part of the analysis of dilution. Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 216, 51 USPQ2d 1882 (2d Cir. 1999). Other circuits simply cited distinctiveness as a general requirement for consideration as a trademark. See, e.g., Times Mirror Magazines, Inc. v. Las Vegas Sports News, LLC, 212 F.3d 157, 166–67, 54 USPQ2d 1577 (3d Cir. 2000), cert. denied, 531 U.S. 1071 (2001). After the TDRA, it appears that the Third Circuit’s interpretation will be implemented.529 U.S. 205, 54 USPQ2d 1065 (2000).Id. at 216.Id. at 213. The Court distinguished product configuration from product packaging, the latter being protectable by a showing of inherent distinctiveness. Id. at 212, 215. See New York Stock Exch., Inc. v. New York, New York Hotel, LLC, 293 F.3d 550, 557, 62 USPQ2d 1260 (2d Cir. 2002) (permitting dilution claim involving defendant’s copying of the stock exchange façade to proceed, and citing a packaging case in support of finding a possibility of inherent distinctiveness).TCPIP Holding Co. v. Haar Commc’ns, Inc., 244 F.3d 88, 98, 57 USPQ2d 1969 (2d Cir. 2001).See, e.g., Malaco Leaf, AB v. Promotion in Motion, Inc., 287 F. Supp. 2d 355, 367 (S.D.N.Y. 2003); New Colt Holding Corp. v. RJG Holdings of Fla., Inc., 2003 U.S. Dist. LEXIS 25288, at *11–14 (D. Conn. 2003) (TCPIP bars trade dress dilution case relating to configuration of gun). This issue is discussed further in Chapter 8, §VIII.C.3.One assumes that the TDRA did not inadvertently do away with the Wal-Mart requirement that acquired distinctiveness must be shown.See, e.g., I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 42, 49 USPQ2d 1225 (1st Cir. 1998); Apple, Inc. v. Samsung Elecs. Co., 920 F. Supp. 2d 1116, 1125 (N.D. Cal. Jan. 29, 2013) (discussing evidence of secondary meaning).See, e.g., Apple, Inc. v. Samsung Elecs. Co., 920 F. Supp. 2d at 1125 (discussing evidence of secondary meaning); I.P. Lund Trading ApS v. Kohler Co., 118 F. Supp. 2d 92, 105, 56 USPQ2d 1776 (D. Mass. 2000).I.P. Lund Trading ApS v. Kohler Co., 118 F. Supp. 2d 92, 108 (D. Mass. 2000).Id.Id. at 111.Id. at 110–11 (discussing different surveys). See Syndicate Sales, Inc. v. Hampshire Paper Corp., 2000 WL 1428665, at *12–15 (S.D. Ind. Aug. 30, 2000). The analysis of secondary meaning in Lund was criticized in Vincent N. Palladino, Secondary Meaning Surveys in Light of Lund, 91 Trademark Rep. 573 (2001).118 F. Supp. 2d at 114. Several states do not require a famous mark; others require only local fame. See Chapter 2. Cf. Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 225 n.7, 51 USPQ2d 1882 (2d Cir. 1999) (noting that even if the (original) FTDA requires actual dilution, New York law does not).But see Nabisco, 191 F.3d at 217 (upholding an injunction for product configuration dilution despite finding only a “moderate” degree of distinctiveness).See generally Chapter 8.I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 46, 49 USPQ2d 1225 (1st Cir. 1998). See TCPIP Holding Co. v. Haar Commc’ns, Inc., 244 F.3d 88, 97, 57 USPQ2d 1969 (2d Cir. 2001) (requiring a “high ‘degree of … acquired distinctiveness’” for a mark to be considered famous); Elite Access Sys., Inc. v. Ramset Automatic Gate Sys., Inc., 2003 WL 1914122, at *5–6 (Cal. Ct. App. Apr. 22, 2003) (applying Lund, requiring more than distinctiveness, and finding product configuration not famous) (opinion not certified for publication).I.P. Lund, 163 F.3d at 47. On remand, the district court dismissed, based on a lack of secondary meaning, and did not have to apply the more rigorous test for a famous mark. 118 F. Supp. 2d 92 (D. Mass. 2000).See Chapter 8, §VIII.C.3.Lanham Act §43(c)(1), 15 U.S.C. §1125(c)(1).Id. §43(c)(2)(A)(iii), 15 U.S.C. §1125(c)(2)(A)(iii).It is also worth noting that the degree of inherent or acquired distinctiveness is a factor in determining likelihood of dilution of the mark. Lanham Act §43(c)(2)(B)(ii), 15 U.S.C. §1125(c)(2)(B)(ii). But cf. Apple, Inc. v. Samsung Elecs. Co., 2012 WL 2571719, at *7–8 (N.D. Cal. June 30, 2012) (rejecting Samsung’s argument that a survey showing less than 60 percent recognition demonstrated lack of fame as a matter of law).Lanham Act §43(c)(4), 15 U.S.C. §1125(c)(4). In Apple, Inc. v. Samsung Electronics Co., 2012 WL 2571719, at *7–8 (N.D. Cal. June 30, 2012), the court did not make clear how it or a jury would make this distinction. The court cited advertisements that featured pictures of the products, but those ads would also have contained Apple’s logo and mark. The jury instructions did not mention the issue. (The jury instructions are available at https://www.bloomberglaw.com/document/X1Q6MB72RGO2.)adidas-Salomon AG v. Target Corp., 228 F. Supp. 2d 1192 (D. Or. 2002). A similar result occurred in adidas-America, Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029, 1062–63 (D. Or. 2008).Target, at 1216–17.E.g., Apple, Inc. v. Samsung Elecs. Co., 920 F. Supp. 2d 1116, 1125–26 (N.D. Cal. 2013) (discussing various design claims, including the iPad), aff’d in part, rev’d in part on other grounds, 786 F.3d 983, 114 USPQ2d 1953 (Fed. Cir. 2015) (the Federal Circuit reversed the trademark claims that had been upheld by the district court on the grounds that the trade dresses were functional, but did not discuss dilution), rev’d on other grounds, 580 U.S. 53, 120 USPQ2d 1749 (2016). See Syndicate Sales, Inc. v. Hampshire Paper Corp., 192 F.3d 633, 640–41, 52 USPQ2d 1035 (7th Cir. 1999).Lanham Act §43(c)(2), 15 U.S.C. §1125(c)(2).U.S. Const., art. I, §8, cl. 8.See TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 35, 58 USPQ2d 1001 (2001) (noting, but declining to decide, the constitutional issue). This issue is discussed further in Chapter 10, §VI.“Nothing in this subsection shall be construed to impair, modify, or supersede the applicability of the patent laws of the United States.” Lanham Act §43(c)(7), 15 U.S.C. §1125(c)(7).Apple, Inc. v. Samsung Elecs. Co., 920 F. Supp. 2d 1079 (N.D. Cal. 2013) (upholding jury award in favor of Apple on patent and dilution claims), aff’d in part on other grounds, rev’d in part on other grounds, 786 F.3d 983, 114 USPQ2d 1953 (Fed. Cir. 2015) (the Federal Circuit reversed the trademark claims on the grounds that the trade dresses were functional, but did not discuss dilution), rev’d on other grounds, 580 U.S. 53, 120 USPQ2d 1749 (2016). Id. See Apple Inc. v. Samsung Elecs. Co., 786 F.3d 983, 996, 114 USPQ2d 1953 (Fed. Cir. 2015) (declining to address the constitutional issue), rev’d on other grounds, 580 U.S. 53, 120 USPQ2d 1749 (2016).