Unit.StartTD2M2013 A Book Body enter text 2025-09-25 593 Part II. Federal Dilution Law 2 enter text Chap13 Trademark Dilution - Federal, State, and International Law, Second Edition td-book 0 main0013 Chapter 13. Dilution as a Basis to Oppose or Cancel a Registration 1DocumentChapter 13. Dilution as a Basis to Oppose orCancel a RegistrationThis chapter is current through May 2025.David WelkowitzWhittier Law School, Costa Mesa, CADisclaimer: The opinions expressed here are solely those of the author and should not be construed as representing the opinions, directly or indirectly, of the U.S. Copyright Office.I.Introduction594II.The Requirement of an Opposition or CancellationProceeding594III.Dilution Claims Must Be Based on Federal Law596A.The Appropriate Federal Statutory Standard597B.Availability of Statutory Exclusions From Liabilityin TTAB Proceedings598C.Issue and Claim Preclusive Effect of PriorProceedings599D.Procedural Issues in Dilution Proceedings BeforeThe TTABIV.Amending Petitions to Allege Dilution600V.TTAB Rulings on Dilution600A.Early Cases601B.The TTAB’s First Major Dilution Case: Setting AnExacting Standard for the Future6021.The Problem of Use and Intent to UseApplications Under Toro6022.A Strict View of Fame Under Toro6033.The Analysis of Dilution in Toro6044.Conclusion: The TTAB’s Strict Approach toDilution Under Toro605C.TTAB Rulings After Toro and Before the TDRA605D.TTAB Dilution Cases Under the TDRA6081.TTAB Decisions Concerning Fame: A StringentApproach608a. TTAB Decisions Concerning the Timing of Fame—At What Point Must a Mark be Famous?2.TTAB Decisions Concerning Dilution:Following the Definition and Applying theFactors611a.The Required Level of Similarity612b.Applying and Balancing the Factors613c.Exclusions from Liability: NoncommercialUses, Parodies, and TTAB Proceedings616d.Other Defenses to Dilution in the TTAB: Laches …………………………………….e.State Sovereign Immunity as a Defense toa Dilution Proceeding in the TTAB ………VI.Federal Circuit Rulings on Dilution617I. IntroductionAll federal trademark registrations are processed by the Patent and Trademark Office (PTO). Given the thousands of applications for registration filed each year, it might be expected that the PTO would have many occasions to rule on trademark dilution claims. However, until August 1999, the PTO had virtually no role in adjudicating trademark dilution issues. Dilution was not made a part of the Lanham Act until the Federal Trademark Dilution Act (FTDA) became effective in January 1996. Prior to the FTDA, parties sometimes opposed registrations on the grounds that they would be likely to cause dilution of the opposer’s existing mark. However, it appears that those arguments were nearly always rejected summarily—because the Lanham Act does not contemplate a dilution claim—or ignored. Moreover, originally the FTDA did not make dilution a ground for opposing a registration, and the TTAB refused to allow challenges to registrations based on the FTDA. On August 5, 1999, the Trademark Amendments Act of 1999 (TAA) became effective. For the first time, dilution became a ground for opposition and cancellation. The effect of these amendments was partly retroactive, applying to applications filed “on or after January 16, 1996” (the effective date of the FTDA). The ability to challenge applications and registrations in the PTO on the grounds of dilution was maintained by the Trademark Dilution Revision Act of 2006.II. The Requirement of an Opposition orCancellation ProceedingThe TAA does not make dilution an automatic consideration in the registration process. Rather, dilution can be asserted only by filing a petition in opposition to the registration under Section 13 or by a petition to cancel a registration under Section 14. This means that the burden is on the owner of the famous mark to raise the issue of dilution, rather than the PTO.Opposition and cancellation proceedings are brought before the Trademark Trial and Appeal Board (TTAB), which is an administrative body within the Patent and Trademark Office. Appeals from TTAB decisions are governed by Section 21 of the Lanham Act. That section provides two avenues of appeal from an adverse decision of the TTAB. The first avenue is a direct appeal to the United States Court of Appeals for the Federal Circuit. Taking this route cuts off the second avenue of appeal, which is to file a suit in a U.S. district court, challenging the TTAB’s decision. In addition, an adverse party (i.e., the appellee, not the appellant) to an appeal to the Federal Circuit may file a notice with the PTO Director, stating its wish to proceed under the second mode of appeal. In that event, the appeal to the Federal Circuit is dismissed, and the appellant must file suit in a U.S. district court within 30 days, or the decision below becomes the final disposition. The usual venue restrictions on such courts apply, with one caveat. If there are foreign adverse parties, or “adverse parties residing in a plurality of districts not embraced within the same State,” action may be brought in the U.S. District Court for the District of Columbia. In such cases, the statute also provides for service on domestic parties wherever they reside. If the appeal is by suit in district court, that court’s decision may be appealed to the appropriate circuit court of appeals, and from there to the U.S. Supreme Court. A decision of the Federal Circuit may be appealed to the Supreme Court directly.Because marks submitted for the Supplemental Register are not subject to opposition, a potential opposer must wait and file a petition to cancel the registration on the grounds of dilution. There is no time limit for canceling a mark registered on the Supplemental Register. Generally, for marks registered on the Principal Register, cancellation petitions must be filed within five years of the date of registration. For dilution claims, the PTO once appeared to take the position that cancellation petitions may be filed after the five-year period, despite the fact that dilution is not specified as one of the bases for unlimited time for cancellation. However, the most recent version of the TTAB’s Manual of Procedure indicates that they now believe that the five year limitation applies to dilution claims.The procedures for prosecuting opposition or cancellation proceedings on the grounds of dilution are the same as for other such proceedings. Practitioners should consult the appropriate Rules of Practice in the Code of Federal Regulations.III. Dilution Claims Must Be Based on Federal LawIt is clear that only dilution claims cognizable under the Trademark Dilution Revision Act (TDRA), or the FTDA before that, may be used to oppose or cancel a registration. Sections 2, 13, and 14 all refer to “dilution under section 43(c)” when stating the grounds for bringing such proceedings. The TTAB may not consider claims that the new registration will lead to dilution under the standards of any state law. The major significance of this limitation is the TDRA’s requirement that a mark be “famous.” Since the TDRA requires a famous mark to be “widely recognized … by the general consuming public of the United States,” locally well known (or locally “famous”) marks will not be considered. Moreover, marks that are “highly distinctive,” or that otherwise satisfy state standards, even if used throughout the country, may not be used to oppose or cancel registrations on dilution grounds. This is a perfectly sensible limitation. Not all states have dilution statutes, and, as Congress recognized, those that have them do not apply them consistently. Also, the TTAB cannot reasonably be expected to make guesses, no matter how educated, about the content of often vague state laws. Even before the advent of the FTDA or TDRA, the TTAB refused to allow dilution claims based on state law.However, even if the basis of claims is limited to federal law, there will be instances where federal courts will be divided about its interpretation. The TTAB normally would be expected to follow Federal Circuit precedent rather than precedent from other circuits. However, where no Federal Circuit precedent exists, the TTAB may find circuit court opinions to be persuasive. Moreover, the existence of a circuit split could influence the decision about whether to appeal a TTAB decision to a district court rather than to the Federal Circuit. The TDRA has, for the moment, eliminated some of the most serious circuit splits: niche fame (no longer permitted), and inherent distinctiveness and eligibility (non-inherently distinctive marks are eligible if famous). However, other issues, such as determining a minimum level of recognition for fame, the proper application of the dilution by blurring factors, the proper application of the definition of tarnishment, and issues related to fair use, could cause divisions in the future.A.The Appropriate Federal Statutory StandardThe TAA, which permitted opposition and cancellation on dilution grounds, provided standing to anyone “who believes that he would be damaged by the registration, including as a result of dilution … under section 43(c) … .” Thus, it incorporated the standard and definitions of dilution set forth in Section 43(c). The TDRA amended the original FTDA in numerous ways, most notably by changing the standard for demonstrating dilution—allowing relief for dilution on a showing of likelihood of dilution—and by defining two categories of dilution—dilution by blurring and dilution by tarnishment. The TDRA amended Sections 2, 13, and 14 to this end. Section 13, which contains the requirements for opposition, now provides in relevant part:Any person who believes that he would be damaged by the registration of a mark upon the principal register, including the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may … file an opposition … .The TDRA makes it clear that a likelihood-of-dilution standard will prevail in opposition proceedings. This conclusion is reinforced by the amended wording in Section 2 which also reflects the current categories of dilution, namely dilution by blurring and dilution by tarnishment. The TTAB is also bound to use the current definition of fame, as set forth in Section 43(c)(2)(A).However, it is worth noting that there is no provision for responding to a dilution objection by issuing concurrent registrations. This makes sense, because a dilution objection must be based on a nationally famous mark whose fame preceded the application for registration. Thus, there is no logical basis for a determination that no likelihood of dilution will result from a geographically limited registration.B.Availability of Statutory Exclusions From Liability in TTAB ProceedingsSection 43(c)(3) contains three exclusions from dilution liability: a broad “fair use” exclusion, noncommercial uses, and news reporting and commentary. These exclusions have been applied in a number of court cases, shielding certain activity from liability. However, the use of the exclusions of Section 43(c)(3) in a registration context is more complicated.The “fair use” exclusion applies only when the use is not as a trademark. Since an applicant clearly intends to use the mark as a trademark, that exclusion would not apply.The TTAB has held that the noncommercial use exclusion cannot be used by an applicant, largely because an applicant must make “use in commerce” of the mark. As an administrative body, the TTAB has held that it cannot hold trademark statutes or rules unconstitutional. This could cause a problem for a parody, especially one that is deemed “commercial.” One would have to bring an appeal to a court to resolve the constitutional issue of free speech. However, the existence of a serious constitutional issue ought to make the TTAB cautious when ruling on an opposition or cancellation petition. On the other hand, the Supreme Court’s decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC, calls into question the applicability of any of the exclusions in the context of an opposition proceeding. In Jack Daniel’s, the Court held that the noncommercial use exclusion was not available when the alleged diluting use was as a trademark. Since an opposition proceeding would only exist when an applicant seeks to use possibly diluting matter as a trademark, the Court’s decision makes it difficult to see how the exclusions could be applied in that context. (Whether or not Congress intended that result is an interesting question.).Finally, a mark that is also a news report or commentary would be rather unusual, though not impossible. How Jack Daniel’s would apply in that case is not entirely clear, but it may also make this exclusion unavailable if there is a requirement that the offending use be other than as a trademark.C.Issue and Claim Preclusive Effect of Prior ProceedingsIn some instances, there may be litigation between the parties prior to any ruling on an application by the junior user to register its proposed trademark. In one such case, the TTAB ruled that the prior decision of a federal court of appeals would be preclusive in the opposition proceeding. In that case, the court of appeals had already ruled that the opposer’s mark was not famous within the meaning of the FTDA. The TTAB applied that ruling and granted summary judgment to the applicant. In another ruling (albeit a non-precedential one), the TTAB, denying a motion for summary judgment, noted that the FTDA had been enacted after the rulings claimed as preclusive, indicating that such a change in the legal climate could be grounds for denying the application of preclusion. However, some limitations on the use of preclusion in the registration context are discussed by the Federal Circuit in Levi Strauss & Co. v. Abercrombie & Fitch Trading Co. The Federal Circuit held that a voluntary dismissal, even with prejudice, of a dilution claim in a prior litigation could not be used for issue preclusion. Moreover, the court held that a prior judgment relating to a line of goods that was narrower than the goods covered by the registration application also was not issue preclusive because the issues were not identical. (For a complete discussion of this case in the context of preclusion as a defense to a dilution claim, see Chapter 10, §VII.C.) In addition, the TTAB has held that a finding of fame in one proceeding is not applicable against someone who was not a party to the prior action. Thus, even if a mark owner proves fame against one applicant, it must prove it again in an opposition to another applicant.The preclusive effect of TTAB decisions in subsequent court litigation is somewhat fuzzier. TTAB decisions rule only on the right to register; they are not preclusive as to the right to use the mark. Nevertheless, in B&B Hardware, Inc. v. Hargis Industries, Inc., the Supreme Court held that TTAB findings can be issue preclusive in a subsequent court proceeding. The Supreme Court also stated that preclusion from TTAB findings was subject to the normal limitations on issue preclusion; therefore, the differences in context may, in many cases, prevent preclusion from operating. However, where the same opposer brings a second cancellation proceeding against the same mark after having its first one dismissed with prejudice, the first proceeding will bar the second one on claim preclusion grounds.D.Procedural Issues in Dilution Proceedings Before the TTABAs noted earlier in this chapter, the procedures used in opposition and cancellation proceedings relating to dilution are the same as those used in other inter partes proceedings before the TTAB. Those who anticipate bringing such proceedings should consult the relevant provisions of the Code of Federal Regulations and the Trademark Trial and Appeal Board Manual of Procedure; the latter, in particular, contains language and citations relevant to dilution actions.One must raise the issue properly in one’s petition; the TTAB will not consider a dilution claim raised for the first time in the opposer’s briefs. However, a dilution claim may be deemed tried by implied consent if the Applicant does not raise a timely objection.In addition to the normal rules, one interesting issue is the availability in dilution claims of the Morehouse defense—a defense raised by an applicant to the effect that the opposer cannot be injured if the current application is for a mark identical to an existing registration owned by the applicant and the goods or services listed in the current application are identical or substantially identical to those in the existing registration. This defense is available in dilution cases, but it appears to be strictly construed by the TTAB. However, in Advance Magazine Publishers, Inc. v. Fashion Electronics, Inc., the Board allowed a laches defense to a dilution claim as to the portion of the goods that were covered by Applicant’s prior registration.IV. Amending Petitions to Allege DilutionBefore the TAA was enacted in 1999, there was no basis for an opposition to registration based on dilution. In order to implement the statute fully, the Trademark Trial and Appeal Board has held that opposers may amend their oppositions to add dilution claims, as long as the registration application being opposed was filed on or after January 16, 1996, the effective date of the FTDA. Leave to amend an opposition petition to add such claims is freely given, but may be refused if the amendment will result in substantial prejudice to the applicant. Where an opposer, filing an opposition in 1997, sought to amend its notice of opposition to add dilution more than two years after dilution-based oppositions were permitted by the TAA, the TTAB found the unexplained delay prejudicial and denied leave to amend. The TTAB also cited as a factor in its denial the fact that discovery was already closed. On the other hand, the TTAB may allow reopening of discovery, and use other mechanisms, to minimize any prejudice. Thus, the 1999 amendments apply retroactively to applications filed before the date of their enactment. If the opposer fails to amend the petition, and the dilution issue is not tried by consent of the parties, then the TTAB will not consider it.Clearly, more than twenty years after the TAA, the legitimacy of excuses for failing to include a dilution claim in an opposition or cancellation proceeding should be viewed in a much different light.V. TTAB Rulings on DilutionThe TTAB may refuse to consider a dilution claim if it decides in favor of the opposer on a confusion claim.A.Early CasesAs noted in the legislative history, one purpose of the 1999 amendments allowing oppositions based on dilution was to create a body of precedent that, it was hoped, would provide guidance on issues relating to dilution. However, the TTAB had little opportunity to rule on dilution claims for over two years (and even then, it made only a few significant rulings until 2010). In a few cases, the TTAB dismissed dilution claims because they failed to allege when the opposer’s mark became famous. The FTDA protects the owner of a famous mark only if its mark became famous before the second user began using the offending mark. Without knowing the date the mark became famous, the TTAB could not rule on the opposition.In a non-precedential case, Red Hat, Inc. v. CMC Magnetics Corp., the TTAB did rule on the merits of a dilution claim. The two marks in question each contained a version of a hat as part of the mark. However, the TTAB dismissed the petition, finding that the two marks were not sufficiently similar for dilution. The TTAB found that the junior mark must be sufficiently similar so as to “conjure an association with the senior.” It derived this standard from several federal cases (including one case interpreting state law). The TTAB also noted (and apparently followed) a Sixth Circuit case holding that similarity for dilution purposes must be greater than for confusion. However, the TTAB’s decision contained little analysis beyond the citation of the federal cases. This indicates the necessarily subjective, and case-specific, nature of pictorial comparisons such as the one in the Red Hat case.B.The TTAB’s First Major Dilution Case: Setting An Exacting Standard for the FutureA little over two years after Congress permitted oppositions and cancellations based on dilution, the TTAB issued its first major dilution opinion. In Toro Co. v. ToroHead, Inc., a manufacturer of electronic parts used in the manufacture of computer disk drives sought to register ToroMR and a bull’s head design as its trademark. An opposition on the grounds of both confusion and dilution was filed by Toro Company, which manufacturers a variety of lawn and garden maintenance products.The TTAB first addressed confusion and concluded that there was no likelihood of confusion. In its discussion of dilution, the TTAB confronted some issues common to all dilution claims, such as when a mark is famous and what suffices to show dilution. But it also confronted issues unique to registration proceedings, particularly the effect of an “intent to use” (ITU) application. Moreover, these issues were raised in a context not necessarily congruent with an ordinary civil action. The TTAB showed a certain level of pragmatism, but also applied stringent standards to key elements of a dilution claim, making it clear that oppositions based on dilution would not easily be sustained. Later opinions have made clear that the exacting approach of Toro would be a consistent theme, making a closer examination of the opinion worthwhile.1.The Problem of Use and Intent to Use Applications Under ToroSection 43(c)(1) requires a use in commerce by the offending user, but in Toro the applicant filed an ITU application and had not yet used the mark. Nevertheless, the TTAB decided that an intent to use would be sufficient for an opposition claim. Otherwise, it noted, dilution claims against ITU applicants could be brought only as cancellations.When the TTAB turned to the issue of fame, it also faced an issue related to the ITU problem: the statute requires that the mark be famous before the second use. But an ITU applicant would not have used the mark. The TTAB held that, in opposition proceedings involving ITU applications, the date of filing would be the date that fame must be established. This result was viewed as consistent with the constructive use provision of the Lanham Act, which deems first use to be the date of filing for an ITU applicant once a registration issues.2.A Strict View of Fame Under ToroOn the issue of fame, the TTAB “appl[ied] a rigorous test to determine the fame and distinctiveness of a mark.” As the TTAB put it, a mark must be “so distinctive that the public would associate the term with the owner even when it encounters the term apart from the owner’s goods or services … .” Applying this standard, the TTAB found that the Toro mark did not “uniquely” point to the Toro Company, the opposer. With regard to other fame factors, there was evidence of significant sales and advertising, and use for almost 90 years throughout the United States. However, the TTAB viewed this as establishing renown only in the niche market of lawn care, not generally outside the market. The TTAB stated that “[f]ame for FTDA purposes cannot be shown with general advertising and sales figures and unsupported assertions of fame by the party,” and that “[p]arties claiming their marks are famous must establish conclusively that the advertising has succeeded.” What was lacking was evidence of actual recognition outside of advertising and sales, such as recognition by the applicant, media attention to the product, or surveys. In short, to be deemed famous a mark must be shown to be “the principal meaning of the word.”3.The Analysis of Dilution in ToroAlthough it found the evidence of fame lacking, the TTAB still considered the issue of dilution. First, the TTAB noted some differences between opposition and cancellation proceedings on the one hand and court proceedings on the other, particularly the fact that the applicant may never have used the mark before opposition proceedings were filed. The TTAB also indicated its agreement with courts that emphasize that “dilution is an ‘extraordinary remedy,’” stating that “unlike in likelihood of confusion cases, we will not resolve doubts in favor of the party claiming dilution.”Because the case arose five years before the TDRA, there were no statutory factors to guide the analysis of blurring. Thus, the TTAB had to formulate a test guided by divergent judicial opinions as to the proper factors. It narrowed the relevant test to three factors: (1) similarity of the marks, (2) renown of the senior mark, and (3) “whether target customers are likely to associate two different products with the mark even if they are not confused as to the different origins of these products.” With regard to similarity, the TTAB used the “substantially similar” test favored by most courts at that time, noting that the marks must be more similar in a dilution analysis than in a confusion analysis. In this case, the TTAB found the differences between applicant’s ToroMR mark and opposer’s “Toro” mark to be significant. Resolving doubts against dilution, the TTAB found this factor not to favor dilution. As with its fame analysis, the TTAB was skeptical that the Toro mark had sufficient renown to extend its protection to goods and services outside of those on which it is used. Turning to the third factor, the TTAB emphasized the need to demonstrate a loss of uniqueness, and it did not believe that such a loss was likely to result from applicant’s use.4.Conclusion: The TTAB’s Strict Approach to Dilution Under ToroThe TTAB took a strict approach to dilution, particularly as to the issue of fame and distinctiveness. It followed the lead of those circuits expressing reservations about the potential for overprotection of marks presented by dilution. Thus, in Toro, it denied relief despite the fact that the opposer was a market leader with long-time use. Moreover, at a time of uncertainty about the proper analysis of dilution, the TTAB followed a theme of caution expressed in opinions from a number of different circuits.C.TTAB Rulings After Toro and Before the TDRABetween the time of the Toro decision in 2001 and the revision of the federal dilution statute in 2006, the TTAB issued very few decisions on dilution. In most of those cases (many of which focus on the issue of fame), the opinions are not citable as precedent of the TTAB. In one citable case, the TTAB refused to allow cancellation of a mark, holding that the petitioner’s Build-A Bear mark and Build A ___ family of marks were not sufficiently similar to the registrant’s Create A Critter mark.The TTAB’s most significant post-Toro, pre-TDRA precedential decision was NASDAQ Stock Market, Inc. v. Antarctica, S.r.l. In NASDAQ, the TTAB sustained an opposition to the registration by an Italian company of the mark NASDAQ (surrounded by a winged creature) on the grounds of confusion and dilution. Perhaps the most significant part of this decision was the ruling that, despite the Supreme Court’s holding in Moseley v. V Secret Catalogue that the original language of the FTDA required a showing of “actual” dilution, a showing of likelihood of dilution was sufficient to sustain an opposition where no use has yet been made of the mark. In this manner, the TTAB followed a pragmatic approach, recognizing that an “actual dilution” standard would make it virtually impossible to oppose an ITU application on the ground of dilution.In other respects, the TTAB followed the path set out in its Toro decision, although with a different result. The TTAB conducted a careful examination of the “distinctiveness and fame” of the NASDAQ mark, noting that distinctiveness requires more than a showing that the mark is registered on the Principal Register. As in Toro, the TTAB considered distinctiveness a separate element of the analysis. It then considered “fame under the more rigorous standard required for dilution,” and determined that the NASDAQ mark is famous. Turning to the issue of blurring, the TTAB did use the Moseley standard—that consumers now view the mark as associated with a new product or associate it less strongly with the original mark owner’s product—which it regarded as consistent with the Toro ruling. Noting that the applicant’s proposed mark was “effectively identical” to the opposer’s famous mark, the TTAB also found that consumers “would either conclude that [on seeing applicant’s mark] it was opposer’s mark being used on or in connection with these products or would have to reach a contrary conclusion only by associating the mark less strongly with opposer.” It concluded that this would constitute dilution by blurring.In an interesting, but non-precedential, decision, the TTAB dismissed an opposition by Nike to an application to register Nikepal on the grounds that the two marks “are not substantially similar for dilution purposes.” Subsequently, a district court found the two marks to be sufficiently similar for dilution purposes and held that Nikepal was likely to cause dilution of the Nike mark.D.TTAB Dilution Cases Under the TDRAAs noted above, the TDRA introduced a number of changes into the federal dilution statute, including a definition of a famous mark, and new definitions of dilution. These changes are applicable to PTO proceedings as well as court proceedings. Although it took a while for the TTAB to issue a significant post-TDRA decision, beginning in 2010 the TTAB became far more active in the dilution arena. Thus, we can see a TTAB dilution jurisprudence emerging from its decisions. As discussed further below, there are two notable themes in these decisions: (1) a strict review of fame, and (2) when applying the definition of blurring and the factors contained in the TDRA the TTAB looks primarily to fame and similarity to determine whether blurring exists.1.TTAB Decisions Concerning Fame: A Stringent ApproachBefore the TTAB considers the issue of fame, the opposer must plead it correctly. The complaint must contain “an allegation that the plaintiff’s mark was famous prior to the earliest date on which defendant can rely for purposes of priority.”Continuing the approach it used under the original FTDA, the TTAB’s analyses of fame under the TDRA are rigorous. This does not mean that assertions of fame are summarily or routinely denied; however, it does mean that some relatively well-known marks have failed to satisfy the high standard set by the TTAB.When discussing fame in the TTAB it is important to distinguish between decisions based on the likelihood of confusion and decisions based on likelihood of dilution. The TTAB uses a multi-factor test for confusion, one of whose factors—indeed, often the critical factor—is the fame of the opposer’s mark. However, both the TTAB and the Federal Circuit have made clear that fame for dilution purposes is altogether separate, and more difficult to establish, than fame for confusion purposes. In fact, the Federal Circuit criticized the TTAB for not sufficiently distinguishing the analysis of fame for confusion from that for dilution, noting that the latter is an “all or nothing” analysis, while the former should be a sliding scale.Furthermore, in case after case, the TTAB has emphasized (often citing its opinion in Toro Co. v. ToroHead, discussed in Section V.B, above) that the standard for demonstrating fame for dilution is a “stringent” one.This stringent standard is well illustrated by the decision in Coach Services, Inc. v. Triumph Learning LLC. The owner of the Coach mark for women’s handbags and accessories claimed that registration of a Coach mark for a series of books and software used to assist in test preparation would be likely to dilute its mark. However, the TTAB found the Coach mark is not famous for dilution purposes, although it was famous for confusion purposes. The key to the TTAB’s decision was that Coach’s evidence, which only covered one year, focused primarily on recognition by young women, with no evidence about other groups of women or men. Thus, Coach at best had shown niche market fame, which is not sufficient under the TDRA. This decision is made more significant by the fact that on appeal the Federal Circuit specifically upheld the TTAB’s determination.In a subsequent non-precedential decision, the TTAB held that, on the record before it, the mark “Jose Cuervo” used on tequila was not famous. The TTAB stressed the paucity of evidence offered by the owner of the Jose Cuervo mark. This case, in conjunction with Coach, illustrates the importance of making a proper record, especially in the TTAB. In another non-precedential decision, the TTAB found that the mark “In-N-Out” (used by fast food restaurants) was not famous. The TTAB noted that opposer’s restaurants were all located in a few western states, and that there was little evidence that the mark was known generally to consumers in the United States.Similarly, in Asustek Computer, Inc. v. ASOS PLC, the TTAB found insufficient evidence of fame for Opposer’s ASUS mark for computers. The Board characterized Opposer’s evidence of advertising during the relevant period as “spotty” and noted that, in the most relevant years, its advertising amounts were far below those of other marks deemed famous. The Opposer’s sales evidence generally postdated the relevant time period; the Board stated that this does not support a finding of fame in the relevant period. Finally the Board found that, at most, Opposer’s evidence showed recognition for computers, but not general fame, i.e., it showed at most niche fame.The TTAB also rejected a claim of fame by the Christian Broadcasting Network for its CBN mark, in a non-precedential decision, The Christian Broadcasting Network, Inc. v. Delicious Ltd. The Board began by acknowledging that the opposer’s marks were registered, which supported a finding of fame. However, with respect to actual evidence of recognition, the Board was skeptical. The network’s most popular show, The 700 Club, is seen by approximately 650,000 households, which the Board described as “a miniscule percentage” of the total households in the United States. The Board further stated that the audience for the network’s shows appeared not to be representative of the general public. With respect to advertising and sales, the Board found it lacking insofar as it failed to show whether it was aimed at the general public. Similarly, the network’s communication to the public did not demonstrate that it was aimed at a broad swath of the public. Therefore, the Board did not find the mark famous and dismissed the dilution claim.In STX Financing, LLC v. Terrazas, the TTAB also rejected a dilution claim on the grounds of lack of fame, noting that it is particularly difficult to show fame in the limited time—one year—that opposer had before the applicant’s first use. The Board then conducted a lengthy analysis of the fame of Opposer’s BAD MOMS mark. The Board began by analyzing Opposer’s advertising expenditures on its BAD MOMS movies. It noted that, although Opposer’s expenditures were large, much of it was spent after Applicant’s filing—meaning that they did not affect the fame of Opposer’s mark prior to the key date of filing. The Board also noted that the expenditures during the pre-filing period are also neither comparable in absolute terms to the advertising expenditures in several dilution cases in which marks have been found to be famous, nor ‘long-running,’ as Opposer claims.” Thus, the Board found these expenditures inadequate to support a claim to fame prior to filing. Turning to the box office receipts of Opposer’s films, the Board acknowledged that they were substantial (in excess of $100 million), but noted that they declined rapidly after a large release. Further the Board noted that they audience was heavily skewed toward women, thus making it less likely that the fame of Opposer’s mark extended to all segments of the population. The Board was similarly unimpressed by Opposer’s evidence of actual recognition, which did not include any surveys. Instead, it relied on reviews of the BAD MOMS movie in various publications. But stated the Board, “[t]he accolades for BAD MOMS again suggest that it was commercially successful and popular, but they do not support a finding that it was recognized as an iconic film by July 28, 2017.” Even the factor of registration did not support fame, although Opposer did have registrations for certain goods and services (which did not overlap those of Applicant). The Board concluded that Opposer had not demonstrated fame prior to the filing of the application.Two more recent decisions involving the use of surveys to demonstrate fame demonstrate a careful approach to the issue. In both cases, Pumpernickel Associates, LLC v. Ningbo Panera Lighting Co., Ltd. and Texas Department of Transportation v. El T. Mexican Restaurants, Inc., the Opposer submitted an “aided” survey in support of its claim to fame. An aided survey is one where the interviewer asks whether the respondent has heard of a particular brand name. However, in both cases, the Board found the surveys inadequate, stating that the Board considers an unaided survey—one in which the respondent must come up with the brand name on his or her own—to be the appropriate survey technique to demonstrate fame.In another non-precedential opinion, the TTAB took a stringent approach to fame in rejecting a dilution claim in Bridgestone Corp. v. Zhanjiang Deni Carburator Co. Bridgestone claimed that its Bridgestone and stylized B marks were famous, but the Board disagreed. The Board noted that fame “is difficult to prove” and that “a mark must be not only famous, but also so distinctive that the public would associate the term with the owner of the famous mark even when it encounters the term apart from the owner’s goods or services, i.e., devoid of its trademark context.” The Board conceded that Bridgestone demonstrated widespread sales and had expended large sums of money for advertising. Nevertheless, “there [was] no evidence regarding the impact of that marketing and advertising.” There was no indication “that when the public encounters the marks on unrelated goods, this use would immediately call to mind opposers’ [Bridgestone’s] marks.” The Board indicated that the record lacked evidence such as media attention or surveys, which would demonstrate the impact of Bridgestone’s marketing.Ace of Spades Holdings LLC v. Sandro Bottega, another non-precedential decision, also contained a detailed analysis of fame, with the Board finding insufficient evidence for dilution. Opposer was a seller of very expensive champagnes and claimed that the colors it used on its bottles were famous marks. After a lengthy analysis, the Board summarized its findings as follows:Opposer’s pre-2017 [the relevant date for fame] advertising does not appear to have been extensive, but more significantly it did not reach the general consuming public, as it was limited to websites and publications directed to champagne afficionados. Opposer’s pre-2017 sales do not appear to have reached beyond a slice of the United States consuming public that was willing and able to pay hundreds of dollars per bottle for Opposer’s super-premium champagne. The pre-2017 media coverage of Opposer’s champagnes generally is very modest and does not focus on the marks at issue in this case or Mr. Carter’s [Jay-Z’s] involvement with the Ace of Spades brand. Although some of Opposer’s champagnes have been recognized to be of very high quality, that fact is of significance primarily, if not exclusively, to consumers in the niche market for super-premium champagne and does not establish that the general purchasing public is familiar with the marks shown in the ‘014 and ‘360 Registrations as the visual equivalents of household words. For the reasons discussed above, Opposer fell far short of proving that by 2017 (or 2013) either of its marks belonged to “‘the select class of marks - those with such powerful consumer association that even non-competing uses can impinge on their value”’ that are entitled to protection from dilution.In Monster Energy Company v. Carter, the Board found that Monster Energy’s stylized M mark was not famous for dilution purposes. In particular, the Board found that the mark may be famous for energy drinks, but that such “niche fame” did not suffice for dilution purposes.In Industria De Diseño Textil, S.A. (INDITEX, S.A.) v. Zara Tours Adventures LLC, the Board held that ZARA was not famous for dilution purposes, citing a lack of evidence that ZARA’s brand was well known to the general public, as opposed to those interested in clothing. The Board noted that there was no evidence of advertising in general circulation publications, that the brand awareness rankings pertained to worldwide use, not just use in the United States, and that its registration, while favoring fame, was “the least significant factor.”The Starbucks Design Logo—i.e., its “Siren” design—was found not famous in Starbucks Corporation v. Mountains and Mermaids LLC. The Board found that much of the evidence of fame came after the relevant date of Applicant’s first use, and that evidence before then was consolidated with evidence of the fame of Starbucks’ marks generally—not specifically this mark. Further, the Board found that “[t]he relatively modest showing of media coverage does not rise to the level of showing that Opposer’s Design Logo marks are akin to a ‘household term,’” and that “[t]he record overall is quite sparse regarding the duration, extent, and geographic reach of advertising and publicity of Opposer’s marks during the relevant time.” In addition, evidence of commercial strength and public recognition did not break out in detail the strength of the Design Logo, as opposed to other Starbucks marks. Overall, the Board found the record “too thin” to support a finding of fame as of the relevant date.Other marks, however, have been able to withstand the TTAB’s exacting review. In Nike Inc. v. Maher, the TTAB found Nike’s Just Do It mark to be famous. The Board carefully examined fame even though fame was conceded by the applicant. It noted the “broad spectrum of the public” that recognized the mark—consistent with the TDRA definition—and the extensive sales, advertising, and third-party recognition of the mark. In Research in Motion Limited v. Defining Presence Marketing Group, Inc., the TTAB found the BlackBerry mark to be famous, citing similar factors. The Rolex mark was found famous in Rolex Watch U.S.A. Inc. v. AFP Imaging Corp. Although Rolex customers would be a relatively narrow group of wealthier people, the mark’s recognition is far more widespread. In particular, the TTAB noted that advertising for Rolex was “designed to reach the general public” and was placed in numerous national publications. It is, in short, a “household name.” In Chanel, Inc. v. Makarczyk, the TTAB found Chanel to be a famous mark. As was the case with Rolex, the TTAB found that Chanel’s advertising and recognition, plus third-party citation of the mark (including in fiction and non-fiction books), reached across genders and various income levels. The Board also cited numerous celebrity endorsements of Chanel products, the variety of products, the long use (over 80 years), and brand rankings showing a highly recognized brand. Also important were Chanel’s own surveys, which were given added significance because they were produced for reasons not related to this proceeding. The Board also conducted a separate inquiry into distinctiveness, finding that Chanel was a very distinctive mark.The Board also allowed Chanel to use the date of the application as the relevant first use date by the applicant, despite the fact that this was a use-based application. It cited a lack of evidence as to the actual date of first use by the applicant.However, in a subsequent opposition to a different application, also brought by Chanel, the Board cautioned that it is not bound by prior findings of fame because the record would not be the same in both cases.In Advance Magazine Publishers, Inc. v. Fashion Electronics, Inc., the Board found the mark VOGUE (for Vogue magazine) to be famous. Relying largely on evidence submitted on Opposer’s claim of confusion, but tailoring the analysis to the definition for dilution, the Board found that the extensive time that VOGUE magazine had been published (over a century), the extent to which it was subscribed by the general public, and the widespread recognition of the mark by the general public led to the result that the VOGUE mark was famous.Not surprisingly, in Christian Dior Couture, S.A. v. Gramkey Investment, Modeling and Consulting, the TTAB found DIOR to be a famous mark. The Board examined Diro’s fairly extensive evidence, including use for over 50 years, sales and advertising, several trademark registrations, and the number of celebrities contracted to wear Dior clothing. The Board also noted numerous articles and rankings of brands, the latter showing Dior to be a well-recognized brand. Finally, the Board rejected Applicant’s argument that Dior was only a luxury brand and thus not known to the “general consuming public”; it found that the goods sold under the brand need not be purchased by the general public as long as the brand itself is widely recognized.In Spotify AB v. U.S. Software, Inc., the TTAB found that Spotify was a famous mark, at least as far back as 2017. The Board first cited the inherent distinctiveness of the mark. Next, the Board examined the statutory factors. The Board cited Spotify’s national advertising, using many celebrities, concluding that Spotify was known even to those who do not use the service. Corroborating this advertising, in the view of the Board, was the evidence of significant usage of the service, especially its growth over the previous seven years. Then citing both online “likes” and other evidence, the Board concluded that Spotify showed high actual recognition of its mark. Finally, the Board noted that the mark was registered, and concluded that the mark was famous.Rolex, Just Do It, Blackberry, Chanel, Vogue, and Dior are all extremely well-known marks. Spotify, a newer brand, is nevertheless one that has become well known. The Motown mark, while very well known, is also often used as a synonym for the city of Detroit. Nevertheless, in UMG Recordings, Inc. v. Mattel, Inc. the TTAB found it to be famous.A closer case was presented by National Pork Board v. Supreme Lobster & Seafood Co., involving an application to register The Other Red Meat as a trademark for salmon, which was opposed by the National Pork Board, owner of the promotional slogan The Other White Meat (for pork). One unusual facet of this opinion was that the TTAB upheld the dilution claim without first considering confusion; usually it reverses the order. After deciding that a promotional slogan could be a legitimate trademark, as well as other preliminary matters, the TTAB turned to the merits of the claim. First, it determined that The Other White Meat is famous, citing large advertising expenditures, third-party references, and a 2000 study finding the slogan to have one of the highest recognition rates of any promotional slogan. It also found that its fame preceded the filing of the present application.In McDonald’s Corp. v. McSweet, LLC, the TTAB upheld the claim from McDonald’s that it had a famous family of marks, consisting of “Mc” followed by a generic or descriptive term. Although the Board carefully examined the evidence of fame, it did not discuss whether the statutory phrase “famous mark” was intended to include a family of marks such as those possessed by McDonald’s.In Tivo Brands LLC v. Tivoli, LLC, the Board found the TiVo mark to be famous. The Board cited large revenues (in the hundreds of millions of dollars), 6.8 million subscribers, and various references in publications to the TiVo brand, as well as indications that before 2010 TiVo was “a ‘household term.’”In Council of Ivy Group Presidents v. IV League Nurse Concierge, Inc., the TTAB found IVY LEAGUE and THE IVY LEAGUE to be famous marks. The Board found that the designation (which was not the creation of the schools) had been used as the name of an athletic conference since 1954 (earlier for just football), and that there is now greater coordination among its members regarding academic matters. The Board also found that the marks were known to designate excellence in academics around the world, that the member institutions had educated millions of students, that the members use the marks in connection with a variety of services, including several professional schools, and that their intercollegiate games have been broadcast widely. There is an IVY LEAGUE website since 1997 (ivyleague.com), the marks have been licensed, there has been extensive third-party mention of the marks, and the term is found in dictionaries.In New York Yankees Partnership v. IET Products and Services, Inc., the TTAB found two marks used by the New York Yankees to be famous: a TopHat logo (see Fig. 13-1, below) and the word mark The House That Ruth Built. In the case of the latter, the evidence that the general consuming public of the United States recognized the phrase as a designation of source was not as strong as one might have desired. Hopefully, this does not augur a less stringent approach to fame by the TTAB than has been evident in most of its prior opinions.Fig. 13-1: The Yankees TopHat logoIn Kate Spade LLC v. Wolv, Inc., the TTAB first noted that fame for dilution purposes is a concept reserved for “a select class of marks that are truly renowned.” Although it found that the KATE SPADE word mark was famous for dilution purposes, it found that the spade symbol mark used by Kate Spade was not famous. The Board noted that “[b]ecause Opposer has not introduced evidence presenting consumers with an independent reference to the spade design apart from the KATE SPADE word mark, consumers do not have a basis to disassociate the spade design from the KATE SPADE word mark.”Finally, an unusual issue of fame was presented by Fiat Group Automobiles, S.p.A. v. ISM, Inc. Fiat opposed the registration of Panda for automobiles, based on its own use of that mark on automobiles. However, Fiat’s use was entirely outside of the United States. Thus, the TTAB had to decide whether a mark could be famous without being used on goods offered in the United States. It looked at the definition of “mark,” which it understood to require “use” in the United States. Thus, it concluded that a “famous mark” refers to one that is used in the United States. “Use” in this context, however, did not mean a use sufficient to create normal trademark rights—it includes “use analogous to trademark use,” meaning uses in the United States that connect the mark with a source but do not satisfy the requirements of use for registration. Alternatively, the TTAB was willing to accept the filing of an application based on intent to use as sufficient to establish standing to oppose another registration, provided that there was also the requisite recognition in the United States for the mark to be considered “famous” under the TDRA. In fact, the TTAB left the door open to a wider view of eligibility, referring to “use in commerce, intrastate use, use analogous to trademark use, or some other type of activity.” It also referred tothe possibility that, in an unusual case, activity outside the Unites States related to a mark could potentially result in the mark becoming well-known within the United States, even without any form of activity in the United States.In any event, there must be widespread recognition of the mark in the United States to satisfy the definition of a famous mark under the TDRA. Here, the TTAB found the pleading failed to show such recognition.a.TTAB Decisions Concerning the Timing of Fame—At What Point Must a Mark Be Famous? As discussed in Chapter 7, above, the TDRA (like the FTDA before it) requires that a mark owner asserting a claim for dilution must show that its mark was famous before the second user made use of the mark. However, this issue is a bit more complicated in the registration context because one can oppose an intent-to-use (ITU) application before the applicant has ever used the mark. One possible conclusion would be that as long as the mark is shown to be famous before the final decision in the opposition proceeding, then that would suffice. But that conclusion would deprive the applicant of the opportunity to invoke the constructive use provision of Section 7(c), which deems the applicant to have made nationwide constructive use of the mark as of the date of the filing of the application. However, this constructive use date is contingent upon registration. If the mark became famous after the filing but before a registration can issue (because of the opposition based on dilution), then the applicant is unfairly deprived of the constructive use provision. Thus, for ITU applications, the TTAB requires that an opposer demonstrate that its mark was famous prior to the constructive use date—i.e., the date that the ITU application was filed. Moreover, the TTAB will use the filing date as the date by which fame must be shown in a use-based application if there is insufficient evidence of when the applicant actually began using the mark. However, if the application is use-based and the applicant can show when it began to use the mark, then the opposer must show that its mark was famous before actual use began. In addition, if the applicant first used the mark on goods or services other than those specified in the application, the opposer must demonstrate fame prior to the first use by the applicant on any goods or services.It is worth noting that the TTAB’s stringency with regard to claims of fame extends to evidence that the mark was famous prior to the filing of the opposed application. In Inter IKEA Systems B.V. v. Akea, LLC, the Board dismissed a dilution claim brought by IKEA because IKEA failed to provide evidence that its mark was famous before the opposed registration application was filed. Furthermore, the TTAB has held that fame must exist at the time of the opposition and throughout the trial.2.TTAB Decisions Concerning Dilution: Following the Definition and Applying the FactorsThe TTAB has analyzed likelihood of dilution in several cases. All of these cases involve blurring claims; there have not yet been any tarnishment analyses by the TTAB. Thus, the focus of the analysis has been the definition of dilution by blurring and the six nonexclusive factors set forth in the TDRA. The TTAB has said that “[d]ilution by blurring occurs when a substantial percentage of consumers, upon seeing the junior party’s use of a mark on its goods are immediately reminded of the famous mark and associate the junior party’s use with the owner of the famous mark, even if they do not believe that the goods come from the famous mark’s owner.”Structurally, the TTAB’s analysis strikes the right note: it emphasizes that the factors alone—particularly association—do not control the result. Rather, the TTAB has frequently stated that dilution requires that the association between the marks be harmful to the distinctiveness of the famous mark. However, when examining the TTAB’s opinions, the basis for distinguishing between uses that are likely to harm the mark’s distinctiveness and those that do not is not obvious.The TTAB has decided few cases claiming tarnishment alone. In one opinion, it dismissed a pleading of tarnishment, finding that the opposer’s claims were merely conclusory, and lacked factual allegations needed to plausibly show likely tarnishment.Moreover, in many cases the TTAB also found likelihood of confusion, making it more difficult to separate the elements of blurring from confusion.a.The Required Level of SimilarityAs discussed in Chapter 9, the role of the similarity of the marks is an evolving one. The TDRA’s definition of dilution places similarity at the center of the analysis. Dilution by blurring is an “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” One of the six factors in the blurring analysis is the “degree of similarity” between the marks. But neither the definition nor the factor specifies any threshold degree of similarity below which a blurring claim must fail. Before the TDRA, the TTAB (and most courts) used a test of “substantial similarity.” If the marks were not substantially similar, then the claim failed. After the TDRA, the TTAB, after some uncertainty, adopted the view of the Second and Ninth Circuits that the TDRA does not require a minimum threshold of similarity. It has stated that the marks must be “‘sufficiently similar to trigger consumers to conjure up a famous mark when confronted with the second mark.’” It has also stated that the marks must be “highly similar.” However, it has also stated (albeit in a non-precedential opinion) that the marks must be “identical or very substantially similar.” One assumes those descriptions are intended to be the same, although the TTAB has not clarified the apparent discrepancy.b.Applying and Balancing the FactorsIn almost all cases in which the TTAB found a mark to be famous, it also found a likelihood of dilution. As discussed below, the TTAB seems to have reduced its analysis predominantly to one of fame and association, at least where the marks are considered very similar. While the TTAB sometimes pays lip service to the statutory definition of blurring, which requires that the alleged diluting use be likely to cause harm to the distinctiveness of the famous mark, its discussions (with an exception discussed below) are almost always perfunctory and apparently find dilution whenever most of the six factors favor the opposing party.Several successful dilution claims involve marks that were fairly obvious plays on famous marks. In one, the owner of the BlackBerry mark for mobile phones and e-mail services opposed registration of CrackBerry for online marketing services and certain items of clothing. The only factor that might have been questioned was similarity. However, the fact that the public often used CrackBerry as a joking reference to a BlackBerry (owing to the addiction BlackBerry owners have to their cell phones) led the TTAB to find sufficient similarity. All of the factors favored the opposer, and the TTAB rejected the applicant’s parody claim, finding that CrackBerry was not a sufficiently successful parody to prevent dilution. In a second case, Nike successfully opposed registration of Just Jesu It (a play on Just Do It). Four of the six factors favored Nike; actual association was neutral because the applicant’s mark had not been used, and intent to create an association was neutral in the absence of any evidence to the contrary. Interestingly, the TTAB went on to consider three additional factors—the size of applicant’s business (apparently relevant to harm to the mark), parody (rejected as not a true commentary on Nike’s mark), and, surprisingly, relatedness of the goods (favoring Nike). This latter factor tends to conflate confusion and dilution. But the TTAB’s ultimate conclusion did not specifically delineate why there was likely to be harm to the famous mark.The third case involved an application to register The Other Red Meat as a trademark for salmon, opposed by the owner of The Other White Meat, used for pork. Discussing the blurring factors, the TTAB found that all but one—actual association (which it found to be neutral)—favored the opposer. As to similarity, it found the marks “sufficiently similar to trigger consumers to conjure up the famous mark when confronted with the second mark.” Regarding degree of distinctiveness, the TTAB primarily examined inherent distinctiveness, finding The Other White Meat inherently distinctive both presumptively (by its registration without secondary meaning) and in fact (as a suggestive mark). It then found the factor of exclusive use to favor the opposer, as well as a high degree of recognition of the famous mark, citing many of the items discussed in connection with fame. The TTAB also found an intent to cause an association on the applicant’s part. It was skeptical of applicant’s disclaimer, noting that a trademark search revealed The Other White Meat as a possible issue, and the widespread recognition of the slogan. It did not find bad faith, but clearly did not view this as essential to having this factor favor dilution. After stating its findings with respect to the factors, the TTAB concluded that there was a likelihood of dilution, although it did not refer back to the definition of dilution by blurring. Ironically, at about the same time that the decision was announced, the National Pork Board indicated it was ready to abandon the slogan in favor of a new one, which could raise the question of whether an abandoned mark can be used to oppose registrations on dilution grounds.Chanel, Inc. v. Makarczyk  was a more straightforward dilution claim that also succeeded. The applicant, who did not file any response to Chanel’s motion for judgment on the papers, wanted to register the identical mark—Chanel—in connection with his condominium business (he used luxury brands as the names of his buildings). After determining that the Chanel mark was famous, the Board examined the statutory factors. Similarity was not an issue, since the marks were identical, though the Board did not invoke any presumptions of dilution from that finding. Factors 2 and 4 (degree of distinctiveness and degree of recognition) clearly favored Chanel, based largely on evidence used to demonstrate fame. Exclusivity of use (factor 3) also favored Chanel, based on a lack of evidence of any other users and evidence of stringent policing of the mark. Intent to associate (factor 5) favored Chanel; the applicant’s own websites not only showed his use of luxury brands, including Chanel, to name his apartments, but also made clear his intent to associate those brands with his products, thus using their reputation to enhance his. No evidence of actual association existed. The Board then examined whether there was a likelihood of harm to the Chanel mark’s distinctiveness. Here the Board cited the licensing of various luxury brands in connection with hotels, and the licensing of luxury brands for interior design features that would be connected with real estate. However, the Board did not explain how this would lead to harm to distinctiveness—the licensing would tend to show only confusion (which means that consumers do not see the brand functioning as a mark for a second entity, which is the essence of blurring).Chanel, Inc. v. Camacho & Camacho, LLP  was somewhat similar to Makarczyk, except that it involved Chanel’s CC Monogram mark, not simply its name mark. In terms of fame, the key issue was whether the mark was famous before the applicant’s first use. The Board found in favor of Chanel on a fairly extensive record of use. Turning to likelihood of dilution by blurring, the Board also found in favor of Chanel—that its mark was likely to be diluted. The Board found the two marks “highly similar in appearance and commercial impression.” The Board also found a high degree of acquired distinctiveness and that Chanel had substantially exclusive use of the mark—in part as a result of aggressive enforcement both in infringement and opposition proceedings. In the absence of direct evidence of actual association, it found this factor to be neutral. It also found the factor of intent to create association to be neutral on the record, finding an absence of evidence of copying. Finally, it found the factor of actual association to be neutral, again citing a paucity of evidence. Nevertheless, the Board found a likelihood of dilution. It determined that “[a] substantial percentage of consumers of Applicant’s services who are exposed to Applicant’s mark are likely to be immediately reminded of Opposer’s famous mark and to associate Applicant’s mark with Opposer,” even though there was essentially no direct evidence to support this assertion. It appears to have been made on the basis of fame, degree of similarity, and exclusivity of use. The Board also found it likely that the distinctiveness of the CC Monogram Mark would be impaired “on the basis of the record as a whole,” although without specifying any particular evidence in support of that conclusion.In Pepsico, Inc. v. Pet C Cola Corporation, the Board found dilution by blurring between “Pepsi-Cola” and “Pet C Cola.” After determining that “Pepsi-Cola” was famous, the Board turned to the dilution factors. The Board determined that the marks were similar, based on their similar sounds and the similar font used for both. The Board further found that the Pepsi-Cola mark was widely recognized in the United States, highly distinctive, and that Pepsico had substantially exclusive use of the mark. Although there was no direct evidence of intent to associate, the Board found such intent based on applicant’s “slavish copying of elements of Opposer’s PEPSI-COLA script mark.” There was no evidence of intent to associate because the applicant had yet to offer products for sale. As for harm to the distinctiveness of the Pepsi-Cola mark, the Board was very conclusory, finding dilution essentially based on association alone—there was no independent assessment of likely harm to the distinctiveness of the famous mark.In a similar manner, the Board found dilution between the mark VOGUE and Applicant’s EVOGUE mark (the latter being used mainly for batteries and battery accessories for cell phones). The Board found that four of the factors favored Opposer and two (intent to cause association and evidence of actual association) were neutral. It’s discussion of harm to the mark was very conclusory. It did not place any value on the absence of evidence of actual association and stated that “there is no evidence that any United States marks come as close to VOGUE as Applicant’s EVOGUE mark. This impairs the distinctiveness of Opposer’s previously registered mark.” Why the fact that no other marks are as close to the VOGUE mark as the Applicant’s would necessarily impair the distinctiveness of the VOGUE mark was not made clear.And in Christian Dior Couture, S.A. v. Gramkey Investing, Modeling and Consulting, the Board found that Applicant’s GIGI DIOR mark was likely to dilute Opposer’s DIOR mark. Applicant relied heavily on third-party uses of marks containing “Dior” to rebut possible dilution. As to third-party registrations, the Board noted that, for many, there was no evidence that they were still in use—registrations not being deemed evidence of actual current use. Others were found not similar to Applicant’s mark in that they merely incorporated the letters DIOR in the mark but did not separate them out as Applicant had. Applicant also submitted search results from a database of businesses, but the Board noted similar problems with that list—there was little or no evidence of whether the names were in actual use and many simply contained the letters DIOR in order, but did not set them out in a way that would create a separate commercial impression. Applicant also submitted numerous web pages of businesses and individuals using a separate DIOR name. But the Board dismissed this evidence:Applicant has submitted hundreds of webpages from websites, social media, and scheduling applications to show “rampant third-party use and commonality of DIOR as part of a name or pseudonym.” What these pages have in common is the lack of any testimony or indicia as to when the business or webpage was created, whether there have been visitors to the webpage, or, if so, how many.Most of the other dilution factors, except for evidence of actual association, were found to favor Dior, including intent to create an association. However, when it came to supporting its conclusion of dilution by blurring, the Board simply recited the fact that the DIOR mark was famous and distinctive prior to Applicant’s first use and said “This impairs the distinctiveness of Opposer’s previously registered mark.”The TTAB found dilution by blurring in Council of Ivy Group Presidents v. IV League Nurse Concierge, Inc. The TTAB began by noting that the added elements of “Nurse Concierge” in Applicant’s mark had been disclaimed and that “IV League” was the dominant aspect of its mark. Given that,, the Board easily found the marks to be similar. Except for intent to create association and evidence of actual association, the other factors all favored Opposer (as one might expect, given that they tend to overlap the fame factors). In reaching its conclusion, the Board did not cite any additional reason for believing that the Applicant’s mark would impair the distinctiveness of the IVY LEAGUE marks; it simply stated that the marks “are sufficiently similar … that an association between the parties’ marks likely to impair the distinctiveness of Opposer’s famous marks is established.” Thus, it appears that fame and similarity are deemed sufficient to demonstrate likelihood of dilution by blurring.In McDonald’s Corp. v. McSweet, LLC, the Board also found dilution by blurring. This case was a bit more unusual in that McDonald’s claimed that “McSweet” diluted its family of famous marks, consisting of “MC” followed by a generic or descriptive term. Five of the six factors favored McDonald’s. The mark was found to be inherently distinctive (factor 2) and there was high public recognition for the family of “MC” marks (factor 4). McDonald’s was found to be a substantially exclusive user of the mark (factor 3). The “McSweet” mark, consisting of “MC” plus a descriptive term, was found to be “very similar” to the McDonald’s family (factor 1). And, through survey evidence, McDonald’s was found to demonstrate that approximately two-thirds of respondents thought of McDonald’s when shown the word McSweet (including respondents who were confused about the two). The only factor not favoring McDonald’s was intent to associate, there being no evidence of such intent on McSweet’s part. The Board then concluded that there was a likelihood of dilution by blurring. Missing, however, was any separate indication of why the Board thought that there was a likelihood of harm to the distinctiveness of the “MC” family of marks.In New York Yankees Partnership v. IET Products and Services, Inc., the TTAB found dilution by blurring of two different marks owned by the New York Yankees by obvious parodies of those marks. The two marks were the Yankees’ TopHat logo (a top hat on a baseball bat with a circular background mimicking a baseball) and the word mark THE HOUSE THAT RUTH BUILT. The applicant sought to register a parody logo with a top hat on top of a syringe, with a prohibition sign over it, and the word mark THE HOUSE THAT JUICE BUILT (a reference to steroids). The Board found that both of the applicant’s marks diluted the Yankees’ marks. Because the applicant’s marks were parodies of the Yankees’ marks, analysis of the factors listed in the TDRA almost entirely favored the Yankees—actual association was an exception because they were intent-to-use applications and, in the case of The House That Ruth Built, exclusivity of use (both of which were found to be neutral). At that point, however, the Board refused to consider whether the parodic nature of the applicant’s marks would negate any likelihood of harm to the distinctiveness of the Yankees’ marks. Disclaiming language in an earlier case, the Board stated:We take this opportunity to modify our prior suggestion in Research in Motion that an alleged parody should be considered as part of our dilution analysis even when parody does not provide a safe harbor for a defendant. We now choose to not consider the parody defense as part of the assessment of the dilution claim, because, as discussed supra, a mark that identifies source—which it must for registration—will not concurrently qualify for a statutory exclusion to a dilution claim. Stated another way, when an applicant’s mark is registrable, because it is being used in commerce to indicate source, such use is not a noncommercial use or fair use. Thus, given the circumstances generally presented by opposition and cancellation proceedings based on allegations of dilution, we find it virtually impossible to conceive of a situation where a parody defense to a dilution claim can succeed in a case before the Board.This position ignores the problem recognized by the Fourth Circuit in its Haute Diggity Dog opinion, that a parody almost invariably invokes most of the statutory factors, but does not necessarily fit the basic definition of blurring: That is, causing harm to the distinctiveness of the famous mark, because the parody depends for its humor on the continued distinctiveness of the famous mark. Furthermore, it appears to conflate the noncommercial use exclusion—which the Board seems to have read out of the statute in opposition proceedings—with the basic issue of whether a parody harms the famous mark. Finally, the Board’s position makes it virtually impossible to register a parody of a famous mark, even for an expressive purpose.In ESRT Empire State Building, L.L.C. v. Liang, a non-precedential opinion, the TTAB found dilution by blurring in an opposition to an intent-to-use application that incorporated the design of the Empire State Building in a logo for NYC Beer. Opposer owned registered trademarks in a design drawing of the Empire State Building and asserted that the applicant’s proposed logo was likely to cause dilution. After finding the design to be famous, the Board examined the six statutory factors. With regard to similarity, although the applicant’s logo included other design features and words, the TTAB found that it “prominently features” the Empire State Building (and applicant admitted that it was used to evoke New York City). Thus, the differences “do not serve to diminish the similarity of the building design therein to Opposer’s design mark.” Distinctiveness and level of recognition (factors two and four) favored the opposer as well—not surprising, given the finding of fame. The third factor, substantially exclusive use, also favored opposer. Unlike the New York Yankees Partnership case, there was no evidence of intent to cause association. And, given that the mark had not yet been used, there was no evidence of actual association. Nevertheless, the Board found sufficient evidence of likelihood of dilution. Although at the outset of its analysis the Board emphasized the need not just for association but also for harm—likelihood of impairment of distinctiveness—the Board did not attempt to explain how the four factors that favored opposer led to the conclusion that harm was likely to occur. Apparently, fame and similarity were deemed sufficient, at least with a very recognizable mark that was exclusively used by one party.In a case not involving a play on the famous mark, the TTAB also found dilution. In TiVo Brands LLC v. Tivoli, LLC, the TTAB began by stating that it must find not only association, but that “such association is likely to ‘impair’ the distinctiveness of the famous mark.” It found the marks in question (opposer’s TiVo and applicant’s TIVOTAPE and TIVOBAR) to be similar, based on the applicant’s use of the entire TiVo mark and its lack of inherent meaning. There was little evidence of third-party use of a TiVo-like mark, so the exclusivity factor also favored opposer. Not surprisingly, the degree of distinctiveness and degree of public recognition factors also favored opposer. However, the Board found no evidence either of intent to cause association or of actual association by the public. Notably, the Board found the latter to favor Applicant because the two had been using the marks concurrently for more than eight years. Nevertheless, the TTAB found likelihood of dilution. Similarity was apparently the key element. However, the fact that there was a lack of evidence of association after so many years makes it difficult to see how one would defend a dilution claim against a mark found famous, unless the marks were very dissimilar.Another interesting case is Spotify AB v. U.S. Software, Inc., where the Board found that the applicants Potify mark was likely to dilute the Spotify mark. The TTAB did not begin by noting the need to show that the applicant’s mark was likely to cause harm to the distinctiveness of opposer’s mark; instead, the Board quoted its test from New York Yankees Partnership:[Dilution] “occurs when a substantial percentage of consumers, on seeing the junior party’s mark on its goods, are immediately reminded of the famous mark and associate the junior party’s mark with the owner of the famous mark, even if they do not believe that the goods emanate from the famous mark’s owner.”Turning to the factors, the Board first found the marks to be “strikingly similar.” It also cited the fact that Potify would be used with certain software applications related to marijuana. Not surprisingly, given its finding of fame, it also found the mark to be highly distinctive. And, with little discussion (the applicant did not discuss this), it found Spotify’s use to be essentially exclusive. Further, it found the mark to be widely recognized in the United States. For the next factor, it found that the applicant intended the Potify mark to create an association with Spotify, and characterized applicant’s objections as “defy[ing] logic and common sense.” The sixth factor, actual association, was found by the Board to be neutral, though citing the results of Google searches and its observation that “because the marks are so similar in how they look and sound, and in their structure, cadence and essential nature” it was likely to conjure an association. The Board concluded that “we find it inevitable that POTIFY ‘will diminish [SPOTIFY’s] distinctiveness.’”An exception to the usual perfunctory analysis occurred in Christian Dior Couture, S.A. v. Bailey, a non-precedential decision that is nonetheless noteworthy. For one thing, there were three separate opinions, all dealing with the issue of how to analyze harm to the distinctiveness of the mark. Applicant attempted to register DESS DIOR as a mark for use in connection with a variety of products connected with music and entertainment. (As part of its opposition, Christian Dior submitted evidence that it cultivated connections with celebrities in order to enhance its brand.) The Board began by considering the dilution by blurring claim. It found the Dior mark to be famous, and that the marks were sufficiently similar to support a dilution claim. Unsurprisingly, it found five of the six factors favored Christian Dior. The lead opinion then set forth a section entitled “Impairment.” It stated that “The statute makes a clear distinction between consumer ‘association’ and ‘impairment.’ In other words, merely showing an association between an applied-for mark and a famous mark is not enough; it must also be shown that this association impairs the distinctiveness of the famous mark.” The opinion then turned to how impairment should be defined, citing various formulations of essentially the same thing—a weakening of the brand association, or selling power, of the famous mark. The opinion then cited the opposer’s CFO’s testimony, stating that the applicant had no permission to use the mark and that allowing the application would impede Christian Dior’s exclusivity and prevent Christian Dior from expanding the use of its mark. On this basis, dilution by blurring was found.A concurring opinion in the case stated that a separate analysis of impairment was not necessary, that applying the six-factor analysis was all that was required. A third, dissenting opinion, agreed with the lead opinion that a separate analysis of impairment was necessary, but found the evidence of such likely harm to be lacking. The dissent first pointed out that the six factor test does little to illuminate the ultimate finding of harm (including the factor of intent, which the dissent states seems to be an attempt to impose a moral sanction on “free riding,” which, while prohibited under European law, is not prohibited by U.S. law). The dissent further notes that the statute allows courts and the Board to consider factors other than the six listed factors. The dissent concludes as follows:We do not have such evidence [of harm] in this case, but we do have evidence of Opposer’s marketing strategy of cultivating “formal DIOR brand ambassadorships with actors and musical artists hand-selected” which, coupled with the fact that Applicant’s use of the term Dior is made without Opposer’s consent, leaves the majority satisfied that an association between the marks is likely to impair the distinctiveness of Opposer’s DIOR mark. This despite the fact that the majority agrees that its findings under the enumerated factors do not establish more than a likelihood of association.While I am troubled by Applicant’s obvious intent to trade off the good will of Opposer’s famous DIOR mark -- as shown by the use of her mark on the specimen of record -- I do not find that these circumstances, including the existence of Opposer’s strategy to promote its services via actors and other celebrities (something many companies do), catapults this case from to one of mere association, to instead, one where likelihood of dilution by blurring is shown to be proven by a preponderance of the evidence; a mark that confuses does not necessarily dilute.Thus, a majority of a Board panel, albeit in a non-precedential opinion, has stated that a separate analysis of harm is necessary and one member is on record stating that it has not been met in this case. Hopefully, the Board will adopt this view in a precedential opinion in the future.These most recent cases from the TTAB indicate that the Board is now taking a position that is very favorable to famous mark owners, but, unfortunately, with a somewhat mechanical analysis that does not connect the factors to the basic definition. In other words, a demonstration of fame and either evidence of actual association or intent to associate seems to lead invariably to a conclusion of likelihood of dilution. Indeed, it appears sufficient to show simply fame and similarity in order to succeed. In the other successful dilution case, the owner of the Motown mark opposed registration of Motown Metal (by Mattel) for toys. As in other cases, the TTAB found the factors of degree of similarity, degree of inherent or acquired distinctiveness, actual recognition, and substantially exclusive use to favor opposer, while the factors of actual association and intent to create association were neutral. The TTAB then concluded that the neutrality of the latter two factors “do[es] not outweigh the other dilution factors.” But there was no discussion of why, especially without any evidence of association, there was a likelihood of harm to the Motown mark’s distinctiveness.One unsuccessful case where fame was found involved an opposition by Rolex to a registration of Roll-X for “x-ray tables for medical and dental use.” The key to this case was the factor of similarity. The TTAB found that, while the Rolex and Roll-X marks would be pronounced the same, Roll-X “engenders a different appearance, meaning and commercial impression from” Rolex. Thus, in this case, the similarity factor favored the applicant. There was no evidence of intent to create an association. Interestingly, however, rather than finding the intent to create association factor neutral, as was the case in the successful dilution claims, in this case it was found to favor the applicant. Finally, Rolex attempted to show actual association via a survey. But although its survey showed that 42 percent of respondents thought of Rolex watches when presented with the Roll-X mark, the TTAB found that insufficient. Thus, this factor also favored the applicant. The balance of factors was found to favor the applicant and the dilution claim failed. Another case where dilution was at least partially unsuccessful was Omega, S.A. v. Alpha Phi Omega. Alpha Phi Omega sought to register a crest mark containing the words “Alpha Phi Omega” for use on jewelry, and the Greek letters AFΩ (alpha phi omega) for use on certain items of clothing, such as sweatshirts and shirts. Its applications were opposed by Omega, a well-known maker of, inter alia, watches, which uses the mark Omega as well as the Greek letter omega in various registered forms. The Board granted applicant’s motion for summary judgment as to the Crest Mark, ruling that it was not likely to cause dilution by blurring of the Omega marks. The Board cited the fact that the two marks were “strikingly dissimilar” and that there was no evidence either of intent to associate or actual association between the marks. As to the AFΩ mark, the Board found issues of fact, particularly as to similarity, precluding summary judgment as to the claim relating to that mark.Thus, where the opposer’s mark is found to be famous, it appears that dissimilarity is a key to defeating a dilution claim at the TTAB.Unfortunately, the TTAB’s cases do not readily explain how one could defeat a dilution claim if the opposer’s mark is famous and the applicant’s mark is similar to opposer’s mark. It is evident in the successful cases that a lack of evidence concerning association—a crucial element of the definition of blurring—is not fatal. It appears that, effectively, fame plus similarity will win (since a famous mark will always have high recognition and probably will be highly distinctive), unless the applicant can conduct a survey demonstrating a low level of actual association. (Ironically, the survey conducted by Rolex hurt its case, which would tend to discourage opposers from conducting such surveys.) Perhaps an Applicant could succeed by showing that the famous mark owner does not engage in substantially exclusive use of the mark, but that would be an unusual case. The only other factor that might be important is if the famous mark was not inherently distinctive; all of the marks discussed above were inherently distinctive. But the statute indicates that that should not disqualify a famous mark from dilution protection. Thus, it appears that the primary barrier to dilution in the TTAB is fame.c.Exclusions from Liability: Noncommercial Uses, Parodies, and TTAB ProceedingsIn general, there is nothing in Section 43(c), or in Sections 2, 13, or 14, that expressly precludes the use of the three exclusions in Section 43(c)(3) in a TTAB proceeding. However, the requirement of the “fair use” exclusion that the offending use be a non-trademark use seems to eliminate that as a practical matter because registered marks would be trademark uses. The noncommercial use exclusion is trickier and was the subject of a TTAB opinion.In American Express Marketing & Development Corp. v. Gilad Development Corp., American Express opposed the application to register Grand American Express Cleveland and Columbus (together with a design). In the most critical part of its decision, the TTAB held that applicants cannot use the noncommercial use exclusion of Section 43(c)(3)(c) when defending a dilution-based opposition. The TTAB reasoned that an applicant must make a “use in commerce” of its mark to qualify for registration and that this would preclude a claim of noncommercial use.A trademark could be an expressive commentary on, or parody of, another’s mark while simultaneously acting as a source identifier. Imagine, for example, a mark like StopSpam or NoCoke, with products (T-shirts, DVDs, etc.) dedicated to a message that the named products were unhealthy. The expressive content of the marks is exactly the sort of thing that was intended to be protected by the noncommercial use exclusion. However, in Jack Daniel’s Properties, Inc. v. VIP Products LLC, the Supreme Court appears to have made the noncommercial use exclusion inapplicable in opposition proceedings. Though the case was not an appeal of a TTAB decision, the Court held that the noncommercial use exclusion could not be used when the alleged diluting use in question was as a trademark. That seems to preclude its use in an opposition proceeding, where the applicant is proposing to use the alleged diluting matter as a trademark.The Federal Circuit’s opinion in In re Brunetti, striking down the Lanham Act’s ban on registering scandalous or immoral marks as unconstitutional (a decision affirmed by the Supreme Court), may provide a means of bringing expressive issues into dilution claims. In Brunetti, the Federal Circuit stated that, in addition to serving a commercial function, trademarks can also convey a noncommercial message. In fact, the Federal Circuit used the same definition of commercial speech as the Ninth Circuit—speech that “does no more than propose a commercial transaction,” and cited the expressive content of trademarks. In Brunetti the Federal Circuit relied on the First Amendment, and its decision was affirmed by the Supreme Court. Perhaps one could argue that the First Amendment applies directly to the situation where a mark is denied registration based on dilution. This is more likely to apply where the opposition is based on tarnishment rather than blurring as tarnishment is more likely to be viewed as viewpoint-based than dilution by blurring. The Supreme Court has indicated that Brunetti was limited to viewpoint-based regulations and that less demanding scrutiny would be applied to content-based but viewpoint-neutral regulations.As noted in Section V.D.2.b, above, claims that proposed marks are non-diluting parodies have not fared well in the TTAB. Primarily this is because the most applicable exclusion, the “fair use” exclusion, only applies to non-trademark uses. Because of the Jack Daniel’s case, it would appear that the noncommercial use exclusion also would not work, for the same reason. Moreover, it is clear that the TTAB is skeptical of arguments that a play on a famous mark negates the potential for dilution.In fact, in New York Yankees Partnership v. IET Products and Services, Inc., the Board, disclaiming earlier indications to the contrary, rejected the Fourth Circuit’s holding that a parody may negate a likelihood of harm to a famous mark’s distinctiveness.However, the Supreme Court’s decision in Matal v. Tam may force a change in the TTAB’s position. In Tam, the Court struck down the Lanham Act’s bar to the registration of disparaging marks on the grounds that it constituted viewpoint discrimination in violation of the First Amendment. One could argue that using dilution to prevent the registration of nonconfusing marks that have a message (and, at least on their face, the marks at issue in New York Yankees Partnership convey a message) may violate the First Amendment. Furthermore, as discussed above, in its decision in Brunetti, the Federal Circuit stated that, while trademarks may serve a commercial purpose, they may also communicate a message. Thus, the Board cannot justify rejecting a parody claim on the grounds that the registration of a mark is merely “commercial speech.” At a minimum, the Tam decision, coupled with its own decision in Brunetti, may require the Federal Circuit to consider First Amendment challenges to a dilution-based refusal of registration (particularly one based on tarnishment, but possibly also one based on blurring).d.Other Defenses to Dilution in the TTAB: LachesAs noted elsewhere in this text, the equitable defense of laches can be applied to dilution claims as well as infringement claims. Although there is no statutory provision for applying laches in ordinary dilution cases in court, there is a specific provision, Section 19, that allows the TTAB to apply laches (as well as acquiescence and estoppel) as appropriate in its inter partes proceedings. As is the case in other proceedings, the key issues are whether the party against whom laches is asserted unreasonably delayed in bringing the action and whether the delay prejudiced the opposing party. Moreover, as the TTAB has noted, in a dilution case one need not consider whether the need to eliminate a likelihood of confusion on the part of consumers outweighs the prejudice to the opposing party. In Advance Magazine Publishers, Inc. v. Fashion Electronics, Inc., the Board allowed a laches defense to a dilution claim as to the portion of the goods that were covered by Applicant’s prior registration.Furthermore, the TTAB has recognized that the doctrine of “progressive encroachment,” often raised to combat a laches defense, may not apply in dilution claims.e.State Sovereign Immunity as a Defense to a Dilution Proceeding in the TTABIn Mountain Gateway Order, Inc. v. Virginia Community College System, a precedential decision, the Board rejected a claim by a state agency as Applicant that the TTAB had no jurisdiction to hear an Opposition to its application to register.VI. Federal Circuit Rulings on DilutionThe Federal Circuit’s first dilution case was decided in 2003. In Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car, Inc., the court affirmed the TTAB, and held that even a geographically localized use by another person prior to a mark’s becoming famous prevented a dilution claim against that user. The court also held that state dilution statutes could not be used to oppose an application for federal registration. Although limited in scope, the Federal Circuit’s first ruling, like the TTAB’s Toro ruling, indicates a careful approach to dilution. The court began its analysis “with an examination of the plain language of the statute.” Its ruling examined the statutory language carefully, emphasizing specific wording. Its opinion did not seek to expand claims under the FTDA into new areas. This decision presages an approach to dilution that does not give the TDRA an expansive reading.The Federal Circuit did not make another significant dilution ruling until 2012, in Coach Services, Inc. v. Triumph Learning, LLC. The Federal Circuit affirmed the TTAB’s decision that the Coach mark, used on women’s handbags and accessories, was not famous for dilution purposes. The court began by noting that the TDRA had eliminated niche market fame as a possibility, and that fame for dilution is subject to a more rigorous standard than fame for confusion. In this case, Coach faced the additional hurdle that it was using “a common English word that has different meanings in different contexts.” Although the Federal Circuit acknowledged evidence of media attention, it agreed that this evidence was equivocal and did not clearly show “widespread recognition” of the Coach mark. Significantly, the court also upheld the Board’s discounting of Coach’s survey evidence because it focused on young women. Thus, the court upheld the TTAB’s finding that Coach was not famous.Although it is difficult to predict future rulings, thus far the Federal Circuit has taken a cautious approach to dilution. However, it has yet to analyze the difficult issue of likelihood of dilution.