David Welkowitz is a Professor of Law Emeritus at Whittier Law School in Costa Mesa, California. He has taught trademark law, international intellectual property law courses, and civil procedure, among other subjects. He was a member of the Whittier faculty from 1983 to 2018. From 2019 to 2024, he served as an attorney with the U.S. Copyright Office in Washington, D.C. Prior to 1983, he practiced law in New York City. Mr. Welkowitz is the author of numerous articles on trademark law and other topics, and he is the co-author of a casebook on celebrity rights. He has also written several lessons in computer-assisted learning, which are used by law students in the areas of civil procedure and trademark law. Professor Welkowitz received his J.D. degree in 1978 from New York University Law School, where he was a member of the Law Review. He received an A.B. degree in 1975 from Princeton University. He is a member of the New York and District of Columbia bars, and is admitted to practice before the federal courts in the Southern and Eastern Districts of New York and the Court of Appeals for the Second Circuit.E.g., K2 Corp. v. Philip Morris, Inc., 192 USPQ 174, 177 (T.T.A.B. 1976); Leo Burnett Co. v. Analog Tech. Corp., 173 USPQ 632, 635 (T.T.A.B. 1972); Max Factor & Co. v. Clairol, Inc., 163 USPQ 240, 243 (T.T.A.B. 1969) (also indicating that dilution requires confusion); Coca-Cola Co. v. Fanta, 155 USPQ 276, 278 (T.T.A.B. 1967); In re The Standard Mattress Co., 153 USPQ 864, 865 (T.T.A.B. 1967); Mister Donut of Am., Inc. v. Mr. Steak, Inc., 150 USPQ 712, 714–15 (T.T.A.B. 1966) (no dilution claim under Lanham Act and state law claims are not cognizable in the TTAB); Interwoven Stocking Co. v. Crest Hosiery Mill, 134 USPQ 43, 45 (T.T.A.B. 1962); see E. M. Bailey Distrib. Co. v. Petro-Vend, Inc., 207 USPQ 769, 772 (T.T.A.B. 1980) (dilution claim “do[es] not state a claim for legal damage to petitioner”). But cf. Campana Corp. v. Atlas Int’l Corp., 114 USPQ 458 (Comm’r Patents 1957) (rejecting dilution claim on the merits but indicating that a claim of “hitching a free ride on the reputation and goodwill developed by another” could be a basis to refuse registration). Some of this history is recounted in Chanel, Inc. v. Makarczyk, 110 USPQ2d 2013, 2022 (T.T.A.B. 2014). E.g., Consolidated Cigar Corp. v. Rembrandt Tobacco Corp. (Overseas) Ltd., 143 USPQ 153 (T.T.A.B. 1964). Babson Bros. Co. v. Surge Power Corp., 39 USPQ2d 1953 (T.T.A.B. 1996) (FTDA not a ground for opposing or canceling registration). Pub. L. No. 106-43, 113 Stat. 218 (1999). This aspect of the amendments was codified in §§2, 13(a), and 14 of the Lanham Act, 15 U.S.C. §§1052, 1063(a), 1064. Trademark Amendments Act of 1999, §2(e), Pub. L. No. 106-43, 113 Stat. 218. 15 U.S.C. §1063. See id. §1052 (refusal of registration for dilution allowed only by opposition proceeding).Id. §1064. See id. §1052 (registration for mark that would dilute another mark can be canceled under §14). Cancellation also may be ordered by a court, even as part of an independent claim for dilution under the Trademark Dilution Revision Act. See Lanham Act §37, 15 U.S.C. §1119. See also Citigroup, Inc. v. City Holding Co., 2003 WL 282202, at *14, 23–24 (S.D.N.Y. Feb. 10, 2003) (ordering cancellation of some marks on grounds of abandonment, but refusing to order cancellation for dilution on grounds that defendant’s marks did not dilute those of plaintiff).See 15 U.S.C. §1067(a) (opposition and cancellation proceedings determined by TTAB). The TTAB includes the PTO Director, the “Deputy Director of the United States Patent and Trademark Office[,] the Commissioner for Patents, the Commissioner for Trademarks, and administrative trademark judges who are appointed by the Secretary of Commerce.” Id. §1067(b). Opposition and cancellation proceedings are a subset of various types of proceedings known as inter partes proceedings. The TTAB also hears appeals from decisions of examining attorneys. Id. §1070.Id. §1071.Id. §1071(a)(1). See 28 U.S.C. §1295(a)(4)(B).15 U.S.C. §1071(a)(1).Id. §1071(b).Id. §1071(a).Id.See Chapter 12, §II.A.15 U.S.C. §1071(b)(4).Id. Foreign parties “may be served by publication or otherwise as the court directs.” Id. This may be contrasted with Fed. R. Civ. P. 4(f), which does not even include publication among the prescribed methods of service on persons located abroad. Given the existence of international agreements concerning service, see Fed. R. Civ. P. 4(f)(1), and the sensitivity of foreign parties to litigation in the United States, see Asahi Metal Indus. Co. v. Superior Court, 480 U.S. 102, 115 (1987), it would be wise for a court to order one of the methods listed in Fed. R. Civ. P. 4(f). Moreover, service by publication, other than as a last resort, may raise constitutional problems. See Mullane v. Central Hanover Bank & Tr. Co., 339 U.S. 306, 315–16 (1950). For an example of a use of Section 1071(b)(4), see Blue Man Prods., Inc. v. Tarmann, 2008 WL 6862402, 2008 BL 370612 (D.D.C. Apr. 3, 2008) (entering default judgment reversing TTAB denial of opposition).See 28 U.S.C. §§1291, 1294.Appeals to the Supreme Court will be by application for writ of certiorari. Id. §1254.Lanham Act §24, 15 U.S.C. §1092.Lanham Act §14(1), 15 U.S.C. §1064(1). A registration may be canceled at any time if the mark becomes generic, is functional or abandoned, or if the registration was obtained fraudulently or in violation of Sections 2(a), (b), or (c) of the Lanham Act. Id. §14(3), 15 U.S.C. §1064(3). Trademark Trial & Appeal Board Manual of Procedure §309.03(c) (2016) (hereinafter TBMP). See Under Armour, Inc. v. IA Nutrition, Inc., 2014 WL 11291288, at *4 n.5 (T.T.A.B. June 30, 2014). Neither the TBMP nor the case law explains why the PTO believes that dilution is not subject to the five-year limitation. Moreover, the TBMP specifically references “[t]hat defendant’s mark would dilute the distinctive quality of plaintiff’s famous mark” as the allowed basis for a cancellation proceeding. TBMP §309.03(c), example (16). Although the provision states that the listed examples are not exhaustive, it is interesting that the dilution example apparently omits dilution by tarnishment. TBMP §309.03(c), example (16) (2023). The text introducing the list of examples of grounds for cancellation states that “The grounds identified in examples (2) (as to de jure functional marks), (3), (12) through (14), (17), and (21) are available for cancellation of a Principal Register registration over five years old.” Since dilution is example (16), it would appear that it is not included in those grounds available after five years.See, e.g., 37 C.F.R. §§2.101–2.107 (opposition), 2.111–2.115 (cancellation), 2.116–2.136 (inter partes proceedings) (2012). One should not take these rules lightly. The TTAB strictly enforces the limitations, including those relating to the time limits for discovery. See National Football League v. DNH Mgmt., Inc., 85 USPQ2d 1852, 1854–55 (T.T.A.B. 2008) (denying motion to extend time for discovery).15 U.S.C. §§1052, 1063(a), 1064 (emphasis added).Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car, Inc., 330 F.3d 1333, 1344–45, 66 USPQ2d 1811 (Fed. Cir. 2003) (state dilution laws cannot be used to oppose registration). However, a drafting error in the Trademark Dilution Revision Act led the TTAB to invoke federal registration as a defense to a cancellation proceeding based on federal dilution. Section 43(c)(6) of the Lanham Act makes federal registration a defense to a state dilution claim. See Chapter 10, §V. But, as originally drafted in 2006, it also made federal registration a defense to a federal dilution claim. The TTAB invoked this defense in Academy of Motion Picture Arts & Sciences v. Alliance of Professionals & Consultants, Inc., 104 USPQ2d 1234 (T.T.A.B. 2012), just before the statute was corrected by Pub. L. No. 112-190, 136 Stat. 1436 (Oct. 5, 2012). See https://www.bloomberglaw.com/document/X3G02V0008D. However, the statutory correction was prospective, and, therefore, proceedings filed before the effective date of the amendment will be decided under the prior wording of the statute. Under Armour, Inc. v. Evade, LLC, 2013 TTAB LEXIS 74 (T.T.A.B. Feb. 14, 2013) (amendment is not retroactive); Trademark Trial & Appeal Board Manual of Procedure §311.02(b) (same).Lanham Act §43(c)(1), 15 U.S.C. §1125(c)(1).Id. §43(c)(2)(A), 15 U.S.C. §1125(c)(2)(A).H.R. Rep. No. 104-374, at 3–4, 104th Cong., 1st Sess. (Nov. 30, 1995), reprinted in 1995 U.S.C.C.A.N. 1029, 1030–31.Mister Donut of Am., Inc. v. Mr. Steak, Inc., 150 USPQ 712 (T.T.A.B. 1966). See, e.g., Nike, Inc. v. Maher, 100 USPQ2d 1018, 1029 (T.T.A.B. 2011) (citing precedent from the Ninth and Second Circuits).See 15 U.S.C. §1071(a)(1), (b)(1) (permitting a choice between direct appeal to the Federal Circuit and an action in federal district court).See V Secret Catalogue, Inc. v. Moseley, 605 F.3d 382, 389, 95 USPQ2d 1050 (6th Cir. 2010) (creating a presumption of tarnishment when the mark is used in sexually oriented situations), cert. denied, 131 S. Ct. 1003 (2011).Lanham Act §13(a), 15 U.S.C. §1063(a) (amended by the Trademark Dilution Revision Act of 2006). In addition, §2(f) directed that an opposition proceeding is the proper remedy for a mark which “when used would cause dilution” should an application for registration be granted. 15 U.S.C. §1052(f) (emphasis added). This Section was also amended by the Trademark Dilution Revision Act. This wording was interpreted to provide standing to oppose registration even when there was only a likelihood of dilution, despite the fact that the original version of Section 43(c) was interpreted to require actual dilution in ordinary civil actions. NASDAQ Stock Mkt., Inc. v. Antarctica, S.r.l, 69 USPQ2d 1718, 1734 (T.T.A.B. 2003). The NASDAQ case is discussed further in §V.C, below. It is also clear that proponents of the 1999 legislation believed that the law would permit such proceedings to be brought before any actual dilution had occurred. See, e.g., 145 Cong. Rec. S7452-04, S7454 (June 22, 1999) (statement of Senator Hatch).The TDRA added six nonexclusive factors for consideration in the analysis of dilution by blurring, 15 U.S.C. §1125(c)(2)(B), and provided a definition of “fame,” 15 U.S.C. §1125(c)(2)(A), with a reduced number of factors. For an analysis of these changes, see Chapters 8 and 9. The TTAB has applied this definition and these factors in its post-TDRA analyses of dilution. See §V.D.2, below.Lanham Act §13(a), 15 U.S.C. §1063(a).The last paragraph of Section 2 now provides:A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 [§13] of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 [§14] of this title or section 1092 of this title.15 U.S.C. §1052.TBMP §1101.01. Cf. Lanham Act §2(d), 15 U.S.C. §1052(d) (permitting concurrent registrations where an objection to registration is based on likelihood of confusion, but where the concurrent registrations will not result in confusion). These exclusions are discussed in Chapter 10, §§I–IV.American Express Mktg. & Dev. Corp. v. Gilad Dev. Corp., 94 USPQ2d 1294, 1298 (T.T.A.B. 2010). This decision is discussed in §V.D.2.c, below, and in Chapter 10, §IV.G.Capital Speakers, Inc. v. Capital Speakers Club of Washington, D.C., Inc., 41 USPQ2d 1030, 1036 (T.T.A.B. 1996); Harjo v. Pro Football, Inc., 30 USPQ2d 1828, 1833 (T.T.A.B. 1994). But cf. In re ADCO Indus.-Tech., L.P., No. 87545258, at 22–24 (T.T.A.B. Feb. 11, 2020) (stating that the TTAB can address constitutional questions even if it cannot strike down a statute as unconstitutional).See David S. Welkowitz, Trademark Trial and Appeal Board, Meet the Constitution, 27 Ford. Intell. Prop. Media & Ent. L.J. 509 (2017). See also In re ADCO Indus.-Tech., L.P., No. 87545258, at 24–26 (T.T.A.B. Feb. 11, 2020) (addressing constitutional issues raised by the applicant).599 U.S. 140 (2023).Id. at 161-62.See In re Elster, 26 F.4th 1328 (Fed. Cir. 2022) (reversing refusal of registration of “Trump Too Small”), rev’d on other grounds sub nom. Vidal v. Elster, 602 U.S. 286 (2024).Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car, Inc., 62 USPQ2d 1857, 1860–61 (T.T.A.B. 2002), aff’d, 330 F.3d 1333, 66 USPQ2d 1811 (Fed. Cir. 2003).Id. The TTAB also rejected opposer’s argument that its mark had become famous in a limited geographic area prior to the applicant’s first use in that area, and that such fame should preclude registration. Id. This ruling was affirmed by the Federal Circuit. Enterprise, 330 F.3d at 1341–43. The TTAB’s issue preclusion ruling was not appealed. Id. at 1341.Western Union Holdings, Inc. v. Conlin, 2004 TTAB LEXIS 476, at *5 (T.T.A.B. Aug. 19, 2004) (not citable as precedent). And where an applicant with two proposed marks (a word mark and a word plus design mark) faced an opposition and chose only to contest the opposition to one of the marks, the Federal Circuit held preclusion did not apply as a result of the default as to the other opposition. Sharp Kabushiki Kaisha v. ThinkSharp, Inc., 448 F.3d 1368, 1370–72 (Fed. Cir. 2006).719 F.3d 1367, 107 USPQ2d 1167 (Fed. Cir. 2013). Id. at 1372–73. Id. at 1374–75. See Nike, Inc. v. Honest E Online, Inc., 2021 WL 1592684, at *5 (T.T.A.B. Apr. 20, 2021) (non-precedential) (discussing fame for likelihood of confusion purposes).FirstHealth of the Carolinas, Inc. v. CareFirst of Md., Inc., 479 F.3d 825, 828, 81 USPQ2d 1919 (Fed. Cir. 2007). The Federal Circuit expressed uncertainty about the possible issue preclusive effect of TTAB findings in a subsequent litigation. Id. at 828 n.1.575 U.S. 138 (2015). Id. at 160. Id. at 154–55. American Rice, Inc. v. Dunmore Props., S.A., 353 F. App’x 428, 430–31 (Fed. Cir. 2009); see Geoffrey, LLC v. Hair Are Us, 2017 WL 2391863, at *7 (T.T.A.B. Apr. 24, 2017) (non-precedential) (claim preclusion applies where applicant defaulted in prior proceeding); Rolex Watch USA, Inc. v. AFP Imaging Corp., 101 USPQ2d 1188, 1189 n.2 (T.T.A.B. 2011), vacated, 2013 TTAB LEXIS 46 (T.T.A.B. Jan. 29, 2013) (applicant abandoned the application) (decision designated precedential July 17, 2013).Volvo Truck Corp. v. Mac Tíre Clothing LLC, 2023 WL 2626010, at *3 (T.T.A.B. Mar. 13, 2023) (non-precedential); Target Brands, Inc. v. Artificer Life Corp., 2014 TTAB LEXIS 203, at *10–11 (T.T.A.B. May 6, 2014) (non-precedential). See, e.g., Advance Magazine Publishers, Inc. v. Johnson, 2023 WL 6879489, at *4 (T.T.A.B. Oct. 13, 2023) (non-precedential), citing Mitchell Miller, P.C. v. Miller, 105 USPQ2d 1615, 1623 n.17 (TTAB 2013).See Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715 (C.C.P.A. 1969). See, e.g., Crazy Horse Mem’l Found. v. Spencer, 2014 TTAB LEXIS 83, at *24 (T.T.A.B. 2014) (non-precedential). Id. at *25–28. 2023 WL 4261426 (T.T.A.B. June 23, 2023). Id. at *5–9. For a discussion of laches in the TTAB context see this Chapter, §V.D.2.d.Boral Ltd. v. FMC Corp., 59 USPQ2d 1701, 1703 (T.T.A.B. 2000).Id. at 1702.Id. at 1703. See Polaris Indus., Inc. v. DC Comics, 59 USPQ2d 1798, 1799 (T.T.A.B. 2000).International Fin. Corp. v. Bravo Co., 64 USPQ2d 1597, 1604 (T.T.A.B. 2002).Id.Boral, 59 USPQ2d at 1703–04 (granting motion to amend).Id. at 1703.See Saravana Bhavan USA, Inc. v. Madras Sarvana Bhavan, Inc., 2003 WL 23845169 (T.T.A.B. Sep. 24, 2003) (not citable as precedent).One might argue that the TDRA so altered the statute that one can be excused for not filing a dilution-based opposition prior to October 2006, when the TDRA became effective. That argument is undercut, however, by the TTAB’s earlier ruling that a likelihood of dilution standard would apply to opposition and cancellation proceedings, notwithstanding the actual dilution standard used in court proceedings. NASDAQ Stock Mkt., Inc. v. Antarctica, S.r.l., 69 USPQ2d 1718, 1734–35 (T.T.A.B. 2003).Starbucks US Brands, LLC v. Ruben, 78 USPQ2d 1741, 1755 (T.T.A.B. 2006).See Boral Ltd. v. FMC Corp., 59 USPQ2d 1701, 1703 (T.T.A.B. 2000) (quoting the legislative history).Pep Boys Manny, Moe & Jack of Cal. v. Cherng Lian Enters. Co., 2001 TTAB LEXIS 32, at *6–7 (T.T.A.B. Jan. 11, 2001) (not citable as precedent); Polaris Indus., Inc. v. DC Comics, 59 USPQ2d 1798, 1800 (T.T.A.B. 2000).Lanham Act §43(c)(1), 15 U.S.C. §1125(c)(1).Although the Federal Rules of Civil Procedure generally apply in inter partes proceedings, 37 C.F.R. §2.116(a), it does not appear that Fed. R. Civ. P. 8 would require such detail in the pleadings. (Proof of the date would be required for a summary judgment or preliminary injunction motion.) On the other hand, the trademark Rules of Practice apply the Federal Rules “wherever applicable and appropriate.” It is not inappropriate for the TTAB to require this detail as a matter of convenience, since it is within the knowledge of the party initiating the proceeding.2000 TTAB LEXIS 767 (T.T.A.B. Oct. 31, 2000) (not citable as precedent).Id. at *12–13.Id. at *12.Id. (citing Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 51 USPQ2d 1882 (2d Cir. 1999); Luigino’s, Inc. v. Stouffer Corp., 170 F.3d 827, 50 USPQ2d 1047 (8th Cir. 1999); Mead Data Cent., Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026, 10 USPQ2d 1961 (2d Cir. 1989) (New York law)).Id. (citing Jet, Inc. v. Sewage Aeration Sys., 165 F.3d 419, 49 USPQ2d 1355 (6th Cir. 1999)). The issue of similarity has since become a more significant topic of discussion. See UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868, 1888 (T.T.A.B. 2011).Red Hat, 2000 TTAB LEXIS 767, at *13. The TTAB’s analysis consisted of the following: “We find that the commercial impressions of the marks in issue are so dissimilar that, in the minds of consumers, applicant’s mark will not conjure an association with opposer’s marks. Furthermore, inasmuch as the marks in issue are not similar enough to satisfy even the likelihood of confusion test, opposer’s claim of dilution must fail as well.”61 USPQ2d 1164 (T.T.A.B. 2001).Id. at 1165.Id. at 1168. Id. at 1171–72.See id. at 1173 (noting differences between a civil action and an opposition proceeding).Id.Id. at 1174.Lanham Act §7(c), 15 U.S.C. §1157(c).Toro, 61 USPQ2d at 1175. Although some of the evidence submitted by the opposer dated from after the filing, the TTAB was willing, in this case, to review it. Id.Id. at 1176. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1374–75, 73 USPQ2d 1689 (Fed. Cir. 2005) (distinguishing “fame” for likelihood of confusion analysis from “fame” for dilution analysis). At that time, the FTDA indicated that its factors for determining fame were also to be used to determine whether the mark was distinctive. The TTAB held that a greater degree of distinctiveness is required for fame than for registration under Section 2(f). Toro, 61 USPQ2d at 1176–77. The TTAB cited Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 51 USPQ2d 1882 (2d Cir. 1999), Sporty’s Farm L.L.C. v. Sportsman’s Mkt., Inc., 202 F.3d 489, 53 USPQ2d 1570 (2d Cir.), cert. denied, 530 U.S. 1262 (2000), and TCPIP Holding Co. v. Haar Commc’ns, Inc., 244 F.3d 88, 57 USPQ2d 1971 (2d Cir. 2001).Toro, 61 USPQ2d at 1177. The statutory factors for determining fame at that time included some factors—notably the degree of inherent or acquired distinctiveness—that are no longer included in the fame portion of the statute. The degree of distinctiveness is now part of the factors for determining dilution by blurring. Lanham Act §43(c)(2)(B)(ii), 15 U.S.C. §1125(c)(2)(B)(ii). In this case, although the TTAB found that the Toro mark was inherently distinctive, it was not coined, and it has a meaning in Spanish—“bull.” Toro, 61 USPQ2d at 1177.Id. at 1178. See also Enterprise Rent-A-Car Co. v. Toyota Motor Corp., 2005 WL 721215, at *1 (T.T.A.B. Mar. 28, 2005) (denying summary judgment and noting issue of fact as to whether opposer’s mark uniquely identified opposer) (not citable as precedent).Toro, 61 USPQ2d at 1178. The TTAB agreed that use must extend to “‘a substantial portion of the U.S.’” Id. (quoting H.R. Rep. No. 104-374, at 7, 104th Cong., 1st sess. (Nov. 30, 1995)).Id. at 1178–79. This was noted particularly with respect to applicant’s computer manufacturing customers. Id. at 1179.Id.Id.Id. at 1181.Id. at 1180. The TTAB raised the issue of whether niche market fame satisfied the statute, but declined to decide whether such a showing was sufficient. Id. at 1182. At that time, the courts were split on this issue. The current statute, which was not in force at that time, requires that a famous mark must be widely recognized by “the general consuming public of the United States.” Lanham Act §43(c)(2)(A), 15 U.S.C.§1125(c)(2)(A). This reinforces the TTAB’s skeptical approach to fame in Toro.The TTAB considered only dilution by blurring. Id. at 1183. It defined blurring as follows:[B]lurring 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.Id. This is not inconsistent with the current definition of dilution by blurring. See Lanham Act §43(c)(2)(B), 15 U.S.C. §1125(c)(2)(B); Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 433–34, 65 USPQ2d 1801 (2003) (discussing the relationship between mental association and blurring).Toro, 61 USPQ2d at 1173.Id. (quoting Advantage Rent-A-Car, Inc. v. Enterprise Rent-A-Car Co., 238 F.3d 378, 381, 57 USPQ2d 1561 (5th Cir. 2001)). The TTAB also quoted the Fourth Circuit’s opinion in Ringling Bros.-Barnum & Bailey Combined Shows v. Utah Div. of Travel Dev., 170 F.3d 449, 50 USPQ2d 1065 (4th Cir.), cert. denied, 528 U.S. 923 (1999), where the court expressed fears that dilution could create “property rights in gross” in trademarks.Toro, 61 USPQ2d at 1174.One popular test at the time, formulated originally for use under state law, was the so-called Sweet factors test. See Mead Data Cent., Inc. v. Toyota Motor Sales, USA, Inc., 875 F.2d 1026, 1035, 10 USPQ2d 1961 (2d Cir. 1989) (Sweet, J., concurring). See Chapter 3 for a discussion of these factors. However, the Board rejected this test because few courts had adopted it under the FTDA. Toro, 61 USPQ2d at 1183. The TDRA added six nonexclusive factors for courts to consider when analyzing dilution by blurring. Lanham Act §43(c)(2)(B), 15 U.S.C. §1125(c)(2)(B). These factors are discussed in Chapter 9, §§II.D.2, II.D.4, and II.D.6. TTAB decisions post-TDRA have used the statutory factors to test blurring. See §V.D.2, below.Toro, 61 USPQ2d at 1183. The first two were familiar factors, used by the Seventh Circuit in its test—see Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 469, 56 USPQ2d 1942 (7th Cir. 2000)—and by the Second Circuit as part of its test. Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 228, 51 USPQ2d 1882 (2d Cir. 1999). The third factor appears to do little more than restate the Board’s definition of dilution, however.Toro, 61 USPQ2d at 1183. Under the TDRA, two appellate courts have rejected the need for “substantial” similarity. Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 633 F.3d 1158, 1166, 97 USPQ2d 1947 (9th Cir. 2011); Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 108–09, 92 USPQ2d 1769 (2d Cir. 2009). The TTAB now follows Levi Strauss and Starbucks. See UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868, 1888 (T.T.A.B. 2011).Toro, 61 USPQ2d at 1183.Id. at 1183–84.Id. at 1184. Although at the time there was a controversy about whether “likelihood” or “actual” dilution was required by the original language of the FTDA (“causes dilution”), the TTAB found it easily resolved in the opposition context. Since an ITU applicant may not have used the mark, a requirement of actual dilution would have made the opposition superfluous. Id. at 1174 n.7. After the TDRA, the standard is clear for all cases: likelihood of dilution.E.g., Immunex Corp. v. Applied Med. Research, Inc., 2006 WL 717522, at *7 (T.T.A.B. Mar. 3, 2006) (showing fame for dilution requires more than showing fame for confusion) (not citable as precedent); Amazon.com, Inc. v. Kalaydjian, 2005 WL 3611776, at *3 (T.T.A.B. Dec. 22, 2005) (summary judgment denied; failure to demonstrate that opposer’s mark was famous before application for registration filed) (not citable as precedent); HBP, Inc. v. Becker Designs, Inc., 2005 WL 3551107, at *1 n.1 (T.T.A.B. Dec. 16, 2005) (failure to plead opposer’s mark was famous before application was filed) (not citable as precedent); Schlage Lock Co. v. Staiano, 2005 WL 3551106 (T.T.A.B. Dec. 12, 2005) (lack of evidence of fame; lengthy use not sufficient) (not citable as precedent); Monster Cable Prods., Inc. v. Shamitoff, 2004 WL 363904, at *1 (T.T.A.B. Feb. 23, 2004) (failure to plead that opposer’s mark was famous before applicant filed) (not citable as precedent); Venator Grp. Retail, Inc v. McCullough, 2003 TTAB LEXIS 39 (T.T.A.B. Jan. 30, 2003) (dismissing dilution claim for failure to demonstrate fame) (not citable as precedent); Waterford Wedgewood PLC v. Forma-Kutzscher GMBH, 2002 WL 31028693, at *2 n.4 (T.T.A.B. Sept. 10, 2002) (fame for dilution claim requires greater showing than fame under Du Pont factors) (not citable as precedent) (see In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973)); Geoffrey, Inc. v. Jannersten Forlag AB, 2002 TTAB LEXIS 86, at *4 (T.T.A.B. Apr. 25, 2002) (same) (not citable as precedent); Creo Prods., Inc. v. Martin-Williams, Inc., 2002 WL 2022647, at *5 (T.T.A.B. Aug. 30, 2002) (dismissing dilution claim for failure to provide evidence of fame) (not citable as precedent); McDonald’s Corp. v. 2Bell B.V., 2002 WL 1561531, at *4 (T.T.A.B. Jul. 15, 2002) (summary judgment denied; more than confusing similarity is required for dilution) (not citable as precedent).Build-a-Bear Workshop v. Silver Dollar City, Inc., 2003 TTAB LEXIS 567, at *14 (T.T.A.B. 2003) (granting summary judgment to registrant).69 USPQ2d 1718 (T.T.A.B. 2003). In another citable opinion, the TTAB dismissed an opposition based on dilution; having found that the opposer’s mark was not “famous” for confusion purposes under the Du Pont test, it was easy to find that it was not famous under Toro. Genesco, Inc. v. Martz, 66 USPQ2d 1260, 1271 (T.T.A.B. 2003). TTAB decisions post-TDRA are discussed in §V.D, below.NASDAQ, 69 USPQ2d at 1737.537 U.S. 418, 433–34, 65 USPQ2d 1801 (2003). The Moseley decision is discussed in Chapter 6.Effective October 6, 2006, the TDRA changed the standard to “likely to cause dilution.”NASDAQ, 69 USPQ2d at 1734–35. Section 13(a) of the Lanham Act, as it was worded before the TDRA, allowed an opposition to be filed by one “who believes that he would be damaged by the registration, including as a result of dilution … under section 43(c) … .” The TTAB found that the “would be” language of §13 permitted an anticipatory remedy, rather than the post-causation remedy apparently anticipated by Moseley. See Time Warner Entm’t Co., L.P. v. FTC Commc’ns, Inc., 2004 WL 624577, at *4 n.14 (T.T.A.B. Mar. 23, 2004) (noting that the TTAB had yet to decide whether Moseley’s actual dilution standard applied to a use-based application). Of course, after the TDRA this issue is much less important.But cf. Kellogg Co. v. Toucan Golf, Inc., 337 F.3d 616, 67 USPQ2d 1481 (6th Cir. 2003), where the Sixth Circuit, in a de novo proceeding challenging a TTAB decision, used the then-existing actual dilution standard to decide the case. The court did not discuss the language of Sections 2(f) and 13 that led the TTAB to conclude that likelihood of dilution was the proper standard in ITU oppositions. Nor did the court discuss any differences between civil actions and TTAB proceedings. However, unlike the situation in NASDAQ, the applicant in Kellogg had actually used the mark for several years.NASDAQ, 69 USPQ2d at 1735 (citing the need to examine the degree of inherent or acquired distinctiveness under former §43(c)(1)(A)). (The current statute requires that a mark be distinctive, but has no factors to guide that determination.) Thus, even if a registration is incontestable, a defendant in an opposition based on dilution is entitled to question the distinctiveness of the mark. Id.Id. at 1736 (discussing the distinctiveness of the NASDAQ acronym).Id. at 1736–37.Id. at 1737. The TTAB pointed to the many news reports using the NASDAQ mark and to the fact that “a large percentage of the American public” has invested, directly or indirectly, in stocks. Id. at 1737 & n.32.Id. at 1737.Id. This is significant in light of the Supreme Court’s statement in Moseley that if the marks are identical, that may constitute sufficient “circumstantial evidence” of dilution. Moseley, 537 U.S. at 434. Even after the TDRA, identical marks may still constitute circumstantial evidence of dilution.NASDAQ, 69 USPQ2d at 1737. The TTAB distinguished the situation in Toro, noting that NASDAQ is a unique word, not a common word. Id.It may be observed that the TTAB’s first statement—that consumers would assume that the mark was that of the NASDAQ Stock Market—seems to describe confusion rather than dilution. The second part of its statement, however, does conform to dilution by blurring.Nike, Inc. v. Nikepal Int’l, Inc., 2005 WL 1024833, at *6 (T.T.A.B. Apr. 21, 2005) (not citable as precedent). The Board opined that the addition of “pal” to the Nike mark created a different “overall commercial impression.” Id. See Big O Tires, LLC v. Wheel Specialties, Ltd., 2009 TTAB LEXIS 194, at *29 (T.T.A.B. Apr. 3, 2009) (finding opposer’s Bigfoot and Big O marks not sufficiently similar to applicant’s Bigg Wheels mark to justify dilution claim) (not citable as precedent).Nike, Inc. v. Nikepal Int’l, Inc., 84 USPQ2d 1820 (E.D. Cal. 2007).TBMP §309.03(c). Accord Sensitel, Inc. v. Continental Disc Corp., 2014 TTAB LEXIS 151, at *2 n.2 (T.T.A.B. Mar. 31, 2014) (non-precedential) (refusing to consider the issue for improper pleading). E.g., Rolex Watch USA, Inc. v. AFP Imaging Corp., 101 USPQ2d 1188, 1191 (T.T.A.B. 2011), vacated, 2013 TTAB LEXIS 46 (T.T.A.B. Jan. 29, 2013) (applicant abandoned the application) (decision designated precedential July 17, 2013); UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868, 1887 (T.T.A.B. 2011); Coach Servs., Inc. v. Triumph Learning, LLC, 96 USPQ2d 1600, 1610–11 (T.T.A.B. 2010), aff’d, 668 F.3d 1356, 101 USPQ2d 1713 (Fed. Cir. 2012). In particular, it appears that the TTAB may be more lenient at the pleading stage about allowing assertions of fame to go forward. See, e.g., Mountain Gateway Order, Inc. v. Virginia Community College Sys., 2024 WL 2863444, at *9 (T.T.A.B. June 6, 2024).Compare Coach Servs., Inc. v. Triumph Learning LLC, 96 USPQ2d 1600, 1611 (T.T.A.B. 2010) (Coach not famous for dilution), aff’d, 668 F.3d 1356, 101 USPQ2d 1713 (Fed. Cir. 2012) (the Federal Circuit specifically upheld the TTAB’s ruling on this issue), with UMG Recordings, 100 USPQ2d 1868 (Motown famous for dilution); Rolex Watch, 101 USPQ2d 1188 (Rolex famous); Nike Inc. v. Maher, 100 USPQ2d 1018 (T.T.A.B. 2011) (Just Do It famous); Research in Motion Ltd. v. Defining Presence Mktg. Grp., Inc., 102 USPQ2d 1187 (T.T.A.B. 2012) (BlackBerry famous), and National Pork Bd. v. Supreme Lobster & Seafood Co., 96 USPQ2d 1479, 1488–91, 1495–96 (T.T.A.B. 2010) (The Other White Meat famous). Several of the decisions holding that better-known marks are not famous are non-precedential. E.g., Destileria Seralles, Inc. v. Kaibushiki Kaisha Donq D1B1A Donq Co., 2017 WL 6728775, at *25 (T.T.A.B. Dec. 28, 2017) (non-precedential) (DON Q not famous); Nautica Apparel, Inc. v. Palmerton, 2015 WL 7273031, at *1–17 (T.T.A.B. Oct. 21, 2015) (non-precedential) (Nautica not famous); BVD Licensing Corp. v. Bosideng Co., 2012 TTAB LEXIS 14 (T.T.A.B. Jan. 10, 2012) (BVD not famous) (non-precedential); Dreamwell, Ltd. v. Kittrich Corp., 2011 TTAB LEXIS 123, at *35–36 (T.T.A.B. Mar. 29, 2011)(Beautyrest not famous for dilution) (non-precedential); Phillips-Van Heusen Corp. v. Luo, 2011 TTAB LEXIS 135, at *19 (T.T.A.B. Apr. 15, 2011) (Arrow not famous) (non-precedential); Swatch AG v. Bernard, 2011 TTAB LEXIS 49, at *31 (T.T.A.B. Feb. 23, 2011) (SWATCH not famous on the admissible record before the TTAB) (non-precedential), aff’d on other grounds sub nom. Swatch S.A. v. Beehive Wholesale, LLC, 888 F. Supp. 2d 738 (E.D. Va. 2012) (finding no likelihood of dilution without addressing the issue of fame), aff’d, 739 F.3d 150, 109 USPQ2d 1291 (4th Cir. 2014).Research in Motion, 102 USPQ2d at 1192.Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1374–75, 73 USPQ2d 1689 (Fed. Cir. 2005) (distinguishing “famous” for likelihood of confusion analysis from “famous” for dilution analysis); see Alfwear, Inc. v. Ku’li BS LLC, 2025 WL 868501, at *12 (T.T.A.B. Feb. 27, 2025) (mark not famous for confusion cannot be famous for dilution) (non-precedential); UMG Recordings, 100 USPQ2d at 1887; Advance Magazine Publishers, Inc. v Johnson, 2023 WL 6879489, at *23 (T.T.A.B. Oct. 13, 2023) (non-precedential) (SELF mark not famous for confusion cannot be famous for dilution); Robert Kirkman, LLC v. Theodoru, 2022 WL 704347, at *9 n.31 (T.T.A.B. Mar. 4, 2022) (non-precedential); Blue Nile, Inc. v. Brent Neale, LLC, 2020 WL 2302386 at *10 n.55 (T.T.A.B. May 7, 2020) (mark not famous for confusion cannot be famous for dilution); Manhattan Int’l Trade, Inc. v. Industrie IP PTY Ltd., 2018 WL 2230859, at *12 (T.T.A.B. May 11, 2018) (non-precedential) (mark not strong for confusion purposes cannot be famous for dilution purposes); U.S. Marine Corps v. Healy, 2017 WL 2297909, at *9 (T.T.A.B. Apr. 25, 2017) (non-precedential) (where MARINE and MARINE ONE marks were found not famous for confusion purposes, they cannot be famous for dilution purposes); Nautica Apparel, 2015 WL 7273031, at *16–17 (non-precedential) (Nautica not famous for dilution purposes, though it is famous for confusion purposes); Chattem, Inc. v. Seubert, 2013 TTAB LEXIS 595, at *24 (T.T.A.B. Nov. 29, 2013) (non-precedential) (noting that the mark—ACT, for anti-cavity rinse—was not famous for confusion purposes); The Village Recorder v. Schnur, 2013 TTAB LEXIS 283, at *44 (T.T.A.B. May 20, 2013) (non-precedential) (also noting that the mark—The Village—was not famous for confusion purposes).Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 1325, 122 USPQ2d 1733 (Fed. Cir. 2017). E.g., Rolex Watch, 101 USPQ2d at 1191 (citing Coach Servs., 96 USPQ2d at 1610); see Advance Magazine Publishers, Inc. v Johnson, 2023 WL 6879489, at *23 (T.T.A.B. Oct. 13, 2023) (non-precedential); Industria De Diseño Textil, S.A. (INDITEX, S.A.) v. Zara Tours Adventures LLC, 2023 WL 6996329, at *4 (T.T.A.B. Oct. 23, 2023) (“It is well established that dilution fame is difficult to prove” (quoting Coach Services, Inc. v. Triumph Learning LLC, 688 F.3d 1356 (Fed. Cir. 2012))) (non-precedential); STX Financing, LLC v. Terrozas, 2021 WL 4352188, at *12 (T.T.A.B. Sept. 22, 2021) (non-precedential).96 USPQ2d 1600 (T.T.A.B. 2010), aff’d, 668 F.3d 1356, 101 USPQ2d 1713 (Fed. Cir. 2012).Id. at 1611. Coach also submitted evidence of media attention which the TTAB also found insufficient to demonstrate widespread recognition among the general public.This point was made by the Federal Circuit on appeal. 668 F.3d 1356, 1372. See Chapter 8, §V, for a discussion of niche market fame.668 F.3d at 1376.Tequila Cuervo La Rojena, S.A. de C.V. v. Cuervo Media LLC, 2013 TTAB LEXIS 191, at *17–18 (T.T.A.B. Apr. 19, 2013) (non-precedential). Id. In-N-Out Burgers v. Fast Lane Car Wash & Lube, LLC, 2013 TTAB LEXIS 131 (T.T.A.B. Mar. 14, 2013) (non-precedential). Id. at *2127, 47. 2025 WL 1431497 (T.T.A.B. May 8, 2025) (non-precedential).Id. at *22.Id. at *23.Id.2020 WL 2063510 (T.T.A.B. Apr. 10, 2020) (non-precedential).Id. at *28. Id. at *30.Id. at *31 (noting the generally religious audience that would watch the shows). The Board also noted the lack of any direct evidence, such as a survey, to show brand awareness.Id. at *32.Id. at *33.2021 WL 4352188 (T.T.A.B. Sept. 22, 2021).Id. at *12.Id at *12–13.Id. at *14.Id. at *15–17.Id. at *17–18.Id. at *19.Id.Id.2025 WL 985438 (T.T.A.B. Mar. 18, 2025).2025 WL 914456 (T.T.A.B. Mar. 7, 2025).Pumpernickel, 2025 WL 985438, at *21, 22; Texas Dept. Of Transp., 2025 WL 914456, at *8. For a critique of the Board’s position, see Hal Poret, Why Aided Awareness is the Proper Primary Method for Assessing Fame for Dilution Claims, 115 Trademark Rep. 764 (2025).2015 WL 5118057 (T.T.A.B. Aug. 7, 2015) (non-precedential). Id. at *16 (quoting Toro Co. v. ToroHead, Inc., 61 USPQ2d 1164, 1177 (T.T.A.B. 2001)). Id. at *17. Id. Id. A similar result on a similar basis was reached in Nautica Apparel, Inc. v. Palmerton, 2015 WL 7273031, at *16–17 (T.T.A.B. Oct. 21, 2015) (non-precedential) (Nautica not famous; TTAB indicated that it was a niche mark and said it was not a “household name”). See Streetcar Orv LLC v. K2 Motor Corp., 2021 WL 1904946, at *25 (T.T.A.B. May 7, 2021) (non-precedential) (indicating that opposer’s mark was not known by the general consuming public).2023 WL 11761161 (T.T.A.B. Dec. 28, 2023) (non-precedential).Id. at *16.2022 WL 873688 (T.T.A.B. Mar. 21, 2022) (non-precedential).Id. at *9–10. 2023 WL 6996329 (T.T.A.B. Oct. 23, 2023) (non-precedential). Id. at *6–9.2023 WL 3336556 (T.T.A.B. May 8, 2023).Id. at *27.Id. at *28.Id.Id. at *29.100 USPQ2d 1018 (T.T.A.B. 2011).Id. at 1024.Id. at 1026.The TTAB took a similar approach—examining fame even though it was basically conceded—in Nike, Inc. v. Lorenzo, 2024 WL 2978515, at *16–17 (T.T.A.B. May 21, 2024) (non-precedential), finding JUST DO IT to be famous. The Board also found JUST DO IT to be famous in Nike, Inc. v. Dericco, 2023 WL 3168424, at *21 (T.T.A.B. Apr. 14, 2023) (non-precedential).102 USPQ2d 1187 (T.T.A.B. 2012).Id. at 1192–93.101 USPQ2d 1188 (T.T.A.B. 2011), vacated, 2013 TTAB LEXIS 46 (T.T.A.B. Jan. 29, 2013) (applicant abandoned the application) (decision designated precedential July 17, 2013).Id. at 1192. The TTAB also noted sales figures, media attention, and the arbitrariness of the mark itself. Id. at 1193.Id.110 USPQ2d 2013 (T.T.A.B. 2014). Id. at 2019–20. Id. at 2020–21. Id. at 2022. Id. The TDRA protects “a famous mark that is distinctive.” Lanham Act §43(c)(1), 15 U.S.C. §1125(c)(1). 110 USPQ2d at 2022–23. Id. at 2023–24. The TTAB reaffirmed this ruling in New York Yankees Partnership v. IET Products & Services, Inc., 114 USPQ2d 1497, 1506 (T.T.A.B. 2015). See Chapter 7, §IV, for further discussion of this issue as it pertains to Chanel. Chanel, Inc. v. Camacho & Camacho, LLP, 2018 WL 447496, at *5–6 (T.T.A.B. Jan. 12, 2018) (non-precedential). 2023 WL 4261426 (T.T.A.B. June 23, 2023).Id. at *18–19. The Board did note that the mark had been registered for over a century, but did not appear to ascribe great value to the fact of registration. Id. at *19.2025 WL 476697 (T.T.A.B. Jan. 31, 2025) (non-precedential).Id. at *5–7.Id. at *8–9.Id. at 10.2022 WL 110251 (T.T.A.B. Jan. 10, 2022).Id. at *10.Id.Id. at *11.Id.Id. at *12. For another, non-precedential, case finding a well-known mark to be famous, see Sony Corp. v. Campbell, 2022 WL 16632963 (T.T.A.B. Oct. 28, 2022) (non-precedential).100 USPQ2d 1868 (T.T.A.B. 2011).Id. at 1889–90.96 USPQ2d 1479 (T.T.A.B. 2010).Id. at 1498 (declining to reach the confusion ground).Id. at 1492–94.Id. at 1488–91, 1495–96. As a slogan aimed generally at the U.S. consumer, it would satisfy the requirement of finding broad consumer recognition to be found famous.Id. at 1496. See Vanderbilt Univ. v. Vanderbilt Mortg. & Fin., Inc., 2010 TTAB LEXIS 207, at *13 (T.T.A.B. May 11, 2010) (dismissing dilution claim that failed to allege fame prior to applicant’s filing) (not citable as precedent).112 USPQ2d 1268 (T.T.A.B. 2014). Id. at 1286. Id. at 1286–88. 2018 WL 6921323 (T.T.A.B. Dec. 31, 2018).Id. at *14.2025 WL 1432507 (T.T.A.B. May 8, 2025) (non-precedential).Id. at *5.Id. at *5–6.Id. at *7–8.114 USPQ2d 1497 (T.T.A.B. 2015). Id. at 1504–05. Although the Board cited large attendance at the original Yankee Stadium, as well as references in newspaper articles, it is far from clear that these demonstrate that the general consuming public recognized the phrase as a trademark, that is, as a source of goods or services, rather than just as a nickname for the structure itself. 2022 WL 1237459 (T.T.A.B. Apr. 25, 2022) (not precedential).Id. at *22.Id. at *23. Id.94 USPQ2d 1111 (T.T.A.B. 2010).Id. at 1112.Id. at 1114.Id.Id. at 1114–15 (citing use in promotional materials).Id. at 1115.Id. at 1114 n.5.Id. at 1115.Id.Lanham Act §7(c), 15 U.S.C. §1057(c). Toro Co. v. ToroHead, Inc., 61 USPQ2d 1164, 1174 (T.T.A.B. 2001). See Yoplait Marques v. Mona Eldib, 2018 WL 6012757, at *1 n.5 (T.T.A.B. Oct. 26, 2018) (non-precedential).Chanel, Inc. v. Makarczyk, 110 USPQ2d 2013, 2022–24 (T.T.A.B. 2014). Omega, S.A. v. Alpha Phi Omega, 118 USPQ2d 1289, 1295 (T.T.A.B. 2016). See Del Monte Foods, Inc. v. Sc. Agr. Monterosso Soc. Coop. SARL, 2018 WL 638487, at *1 n.2 (T.T.A.B. Jan. 29, 2018) (dilution claim dismissed for failure to allege that DEL MONTE mark became famous before applicant’s first use of the mark); Chanel, Inc. v. Camacho & Camacho, LLP, 2018 WL 447496, at *5 (T.T.A.B. Jan. 12, 2018) (non-precedential) (employing first use date as the proper measuring date). Omega, 118 USPQ2d at 1295–96. This is notwithstanding the Board’s willingness to use the date of application as the relevant date in a use-based context. See Makarczyk, 110 USPQ2d at 2023–24. 110 USPQ2d 1734 (T.T.A.B. 2014). Id. at 1745–46. Similarly, if the pleadings fail to allege fame prior to applicant’s first use date, the dilution claim will be dismissed. Edge Games, Inc. v. Razer (Asia-Pac.) Pte, Ltd., 2015 WL 9913827, at *2 (T.T.A.B. Sept. 25, 2015) (non-precedential). Cf. Spotify AB v. U.S. Software, Inc., 2022 WL 110251 (T.T.A.B. Jan. 10, 2022) (finding Spotify famous before applicant’s first use date); Tracfone Wireless, Inc. v. Spy Phone Labs LLC, 2018 WL 3995982, at *2 n.10 (T.T.A.B. Aug. 16, 2018) (non-precedential) (stating that the TTAB would consider evidence of fame “through the time of trial, provided that the prerequisite of establishing fame prior to the defendant’s priority date is met”).TiVo Brands LLC v. Tivoli, LLC, 2018 WL 6921323, at *13 (T.T.A.B. Dec. 31, 2018).See Makarczyk, 110 USPQ2d 2013; Research in Motion Ltd. v. Defining Presence Mktg. Grp., Inc., 102 USPQ2d 1187 (T.T.A.B. 2012); Rolex Watch USA, Inc. v. AFP Imaging Corp., 101 USPQ2d 1188 (T.T.A.B. 2011), vacated, 2013 TTAB LEXIS 46 (T.T.A.B. Jan. 29, 2013) (applicant abandoned the application) (decision designated precedential July 17, 2013); UMG Recordings Inc. v. Mattel, Inc., 100 USPQ2d 1868 (T.T.A.B. 2011); Nike, Inc. v. Maher, 100 USPQ2d 1018 (T.T.A.B. 2011); National Pork Bd. v. Supreme Lobster & Seafood Co., 96 USPQ2d 1479 (T.T.A.B. 2010).The definition and factors are as follows:(B) For purposes of paragraph (1), “dilution by blurring” is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:(i) The degree of similarity between the mark or trade name and the famous mark.(ii) The degree of inherent or acquired distinctiveness of the famous mark.(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.(iv) The degree of recognition of the famous mark.(v) Whether the user of the mark or trade name intended to create an association with the famous mark.(vi) Any actual association between the mark or trade name and the famous markUMG Recordings, 100 USPQ2d at 1888. See Council of Ivy Group Presidents v. IV League Nurse Concierge, Inc., 2025 WL 1432507, at *9 (T.T.A.B. May 8, 2025) (non-precedential).E.g., Makarczyk, 110 USPQ2d at 2026; Nike, 100 USPQ2d at 1027; Rolex Watch, 101 USPQ2d at 1194; see UMG Recordings, 100 USPQ2d at 1890 (finding that applicant’s mark would be likely to impair the distinctiveness of opposer’s famous mark).See, e.g., Nike, Inc. v. Lorenzo, 2024 WL 2978515, at *19 (T.T.A.B. May 21, 2024) (non-precedential) (after analyzing the statutory factors and finding all favored Nike or were neutral, the Board stated “Opposer has shown on this record that its mark is famous, that it became famous prior to the filing date of Applicant’s application for her mark, and that an association exists between the parties’ marks that would impair the distinctiveness of Opposer’s famous mark”); McDonald’s Corp. v. McSweet, LLC, 112 USPQ2d 1268, 1294 (T.T.A.B. 2014) (after analyzing the statutory factors for blurring, the Board stated simply, “After considering all of the relevant factors, we find that Applicant’s mark is likely to impair the distinctiveness of Opposer’s family of ‘MC’ marks and is therefore likely to cause dilution by blurring”). Red Bull GMBH v. Mendoza, 2018 WL 6929647, at *1 (T.T.A.B. Dec. 21, 2018) (non-precedential).Lanham Act §43(c)(2)(B), 15 U.S.C. §1125(c)(2)(B) (emphasis added).Id. §43(c)(2)(B)(i), 15 U.S.C. §1125(c)(2)(B)(i).Nike, Inc. v. Maher, 100 USPQ2d 1018, 1028–29 (T.T.A.B. 2011) (discussing pre-TDRA law).E.g., Nike, 100 USPQ2d at 1029; Rolex Watch USA, Inc. v. AFP Imaging Corp., 101 USPQ2d 1188, 1194 (T.T.A.B. 2011), vacated, 2013 TTAB LEXIS 46 (T.T.A.B. Jan. 29, 2013) (applicant abandoned the application) (decision designated precedential July 17, 2013). See Research in Motion Ltd. v. Defining Presence Mktg. Grp., Inc., 102 USPQ2d 1187, 1198 (T.T.A.B. 2012) (stating that the marks must be “highly similar”). The uncertainty came in an earlier case. See Citigroup, Inc. v. Capital City Bank Grp., Inc., 94 USPQ2d 1645, 1667 (T.T.A.B. 2010), aff’d on other grounds, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011).Rolex Watch, 101 USPQ2d at 1194–95 (quoting National Pork Bd. v. Supreme Lobster & Seafood Co., 96 USPQ2d 1479, 1497 (T.T.A.B. 2010)). Accord Nike, Inc. v. Lorenzo, 2024 WL 2978515, at *17–18 (T.T.A.B. May 21, 2024) (non-precedential) (finding Applicant’s DON’T JUST DO IT, GET IT DONE mark sufficiently similar to Nike’s JUSST DO IT mark). See Monster Energy Co. v. Carter, 2022 WL 873688, at *10 (T.T.A.B. Mar. 21, 2022) (non-precedential) (using the “sufficiently similar” standard, but finding the marks dissimilar).Research in Motion, 102 USPQ2d at 1198.Jockey Int’l, Inc v. Cooper, 2021 WL 1828125, at *27 (T.T.A.B. Apr. 30, 2021), quoting Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492, 1514 (T.T.A.B. 2005) (denying summary judgment) (not precedential).New York Yankees P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497 (T.T.A.B. 2015); Research in Motion, Ltd. v. Defining Presence Mktg. Grp., Inc., 102 USPQ2d 1187 (T.T.A.B. 2012); Nike Inc. v. Maher, 100 USPQ2d 1018 (T.T.A.B. 2011); National Pork Bd. v. Supreme Lobster & Seafood Co., 96 USPQ2d 1479 (T.T.A.B. 2010); see DC Comics v. Gotham City Networking, Inc., 2012 TTAB LEXIS 196, at *11–12 (T.T.A.B. May 14, 2012) (opposition to Gotham Batmen registration for, inter alia, “amateur softball games”; issues of fact precluded summary judgment) (non-precedential).Research in Motion, 102 USPQ2d at 1189.Id. at 1197–98.The TTAB noted the inherent distinctiveness of the BlackBerry mark in its analysis of the degree of distinctiveness. Id. at 1198.Id. at 1200. The issue of parody and dilution is discussed in Chapter 9.Nike, 100 USPQ2d 1018.Id. at 1030.The TTAB later referred to this latter factor as “bad faith,” id. at 1031, but that is not necessarily the same as an intent to create an association.Id. at 1030–31.Id. at 1031.See id. at 1031–32. A similar result was reached in Nike, Inc. v. Dericco, 2023 WL 3168424 (T.T.A.B. Apr. 14, 2023) (non-precedential), where Nike opposed the application to register Just Don It (a reference to encouraging people to wear masks during the COVID-19 pandemic). The Board found a high degree of association with the Opposer’s mark (JUST DO IT), that the applicant intended to foster an association between the marks, that the famous mark had a high degree of distinctiveness, and that the two marks were sufficiently similar—the only factor not favoring Nike was actual association, probably because applicant’s mark was not yet in use. Id. at *22–24.National Pork Bd., 96 USPQ2d 1429.Id. at 1497.Id. at 1498.Id. Although the TTAB declined to find bad faith, it found that the applicant’s explanation of how it came up with its mark “strains credulity.”Id.See Julie Root, “‘The Other White Meat’ slogan being retired,” Farmweeknow.com, Feb. 18, 2011, available at http://www.farmweeknow.com/story.aspx/the/other/white/meat/slogan/being/retired/3/46698 (last visited Aug. 5, 2012); E.J. Schultz, “Pork Tries New Tagline Beyond ‘Other White Meat,’” Advertising Age (Mar. 4, 2011), available at http://adage.com/article/news/pork-tagline-white-meat/149242/ (last visited Aug. 5, 2012).110 USPQ2d 2013 (T.T.A.B. 2014). Id. at 2016–17. Id. at 2025, 2026. Id. at 2025–26. Id. at 2026. Id. 2018 WL 447496 (T.T.A.B. Jan. 12, 2018) (non-precedential). Id. at *7–12. Id. at *14. Id. at *14–16. Id. at *16. Id. at *17. Id. Id. Id. Id. 2023 WL 3775398 (T.T.A.B. June 1, 2023) (non-precedential).Id. at *6–9. The Board also determined that Pepsi-Cola was famous before Applicant’s first use.Id. at *11.Id. at *13.Id. at *13–14.Advance Magazine Publishers, Inc. v. Fashion Electronics, Inc., 2023 WL 4261426 (T.T.A.B. 2023). As noted in the discussion of the laches defense, the Board found that laches barred the dilution claim as to many of the Applicant’s goods and only used dilution against those goods to which laches did not apply. See this Chapter §III.D. and §V.D.2.d.Id. at *21. To the same effect, see Advance Magazine Publishers, Inc. v. Hollifield, 2023 WL 8433806 (T.T.A.B. Nov. 30, 2023) (VOGUE VEGAN likely to dilute the VOGUE mark) (non-precedential).2025 WL 476697 (T.T.A.B. Jan. 31, 2025) (non-precedential).Id. at *12–19.Id. at *12.Id.Id. at *13–14.Id. at *14. Applicant’s social media evidence was treated similarly. Id. at *15–16.Id. at *16–19.Id. at *19.2025 WL 1432507 (T.T.A.B. May 8, 2025) (non-precedential).Id. at *10. The Board further noted that Applicant’s use of a stylized font and a syringe for the “I” did not change the dominance of “IV League” in the mark. Id. at *11.Id. at *14.112 USPQ2d 1268 (T.T.A.B. 2014). Id. at 1289 (the “degree” of inherent distinctiveness was not indicated). Id. at 1290. Id. at 1289–90. Id. at 1289. Id. at 1292. Id. at 1290. Id. at 1294. 114 USPQ2d 1497 (T.T.A.B. 2015). Id. at 1509–10. See Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 267, 84 USPQ2d 1969 (4th Cir. 2007). The Board’s determination not to allow the noncommercial use exclusion in opposition proceedings seems unwarranted as well, even if it would not apply in most cases. See Chapter 10, §IV.G. Opp. No. 91204122 (T.T.A.B. June 17, 2016) (non-precedential). Id. at 19. Id. at 17. Id. Id. at 17–18. Id. at 18. Id. at 19. Id. (“these factors [lack of intent or actual association] are insufficient to overcome a finding of dilution in this case”). Id. at 13–14. A similar analysis can be found in Nike, Inc. v. Bauman-Buffone, 2019 WL 1491529 (T.T.A.B. Mar. 20, 2019) (non-precedential). And, for another non-precedential finding of dilution, see Sony Corp. v. Campbell, 2022 WL 16632963 (T.T.A.B. Oct. 28, 2022) (non-precedential).2018 WL 6921323, at *13 (T.T.A.B. Dec. 31, 2018).Id. at *15.Id. at *17.Id. at *18.Id. at *19.Id. at *20.Id. at *19. The analysis in American Express Marketing & Development Corp. v. Vo, 2018 WL 6650136 (T.T.A.B. Dec. 13, 2018) (non-precedential), is also similar, with one possibly notable exception. The Board analyzed the likelihood that consumers would think of the American Express mark, after seeing the applicant’s Amerixpress mark. Id. at *18. This at least provides some basis to conclude that the distinctiveness of the mark will be impaired, although it is a relatively small step in that direction.2022 WL 110251 (T.T.A.B. Jan. 10, 2022).Id. at *12, quoting N.Y. Yankees P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497, 1509 (TTAB 2015). Of course, this quote requires no evidence of harm to the famous mark—the existence of association, in the Board’s view, necessarily causes harm.Id. at *14.Id. at *15.Id. at *15–16.Id. at *16.Id. Id. at *17. The Board did not cite any evidence for the latter observation.Id.2023 WL 11758474 (T.T.A.B. Aug. 23, 2023) (non-precedential).Id. at *1.Id. at *2–5.Id. at *10-14. The factor of actual association was found to be neutral. Id. at *14. The Board found evidence that the Applicant intended to create an association. Id. Id. at *15.Id. At this point, the opinion cited for support two federal court opinions, Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 156 F. Supp. 3d 425 (S.D.N.Y.), aff’d, 674 F. Appx. 16 (2d Cir. 2016), and Hugunin v. Land O’ Lakes, Inc., 815 F.3d 1064 (2016).Id. at *17.Id.Id. at *19 (concurring opinion of Kulke, ATJ).Id. at *20 (dissenting opinion of Lebow, ATJ) (“Like a signpost pointing in the wrong direction, the list of factors directs attention away from the key issue of whether there is a likelihood of impairment of the distinctiveness of the famous mark. The failure of the six[-]factor list to include likely impairment of the distinctiveness of the famous mark has misled some courts into assuming (without proof) that if there is a likelihood of association with the famous mark, then there automatically must be a likelihood of impairment of the distinctiveness of the famous mark.”).Id. at *21–22. For a discussion of European law, see Chapter 15.Id. at *23 (citing 15 U.S.C. 1125(c)(2)(B)).Id. UMG Recordings Inc. v. Mattel, Inc., 100 USPQ2d 1868 (T.T.A.B. 2011).Id. at 1888–89.Id. at 1890.Rolex Watch USA, Inc. v. AFP Imaging Corp., 101 USPQ2d 1188, 1189 (T.T.A.B. 2011), vacated, 2013 TTAB LEXIS 46 (T.T.A.B. Jan. 29, 2013) (applicant abandoned the application) (decision designated precedential July 17, 2013).Id. at 1195.Id.Id.Id. at 1196–97.118 USPQ2d 1289 (T.T.A.B. 2016). Id. at 1291. Id. at 1291–92. Id. at 1300. Id. at 1299. See also Altadis U.S.A., Inc. v. Bouldoukian, 2016 TTAB LEXIS 259 (T.T.A.B. June 9, 2016) (non-precedential) (dismissing dilution claim finding, inter alia, marks to be “profoundly dissimilar,” although using incorrect standard of need for “identical or very substantially similar” marks). Omega, 118 USPQ2d at 1300 (“at a minimum, genuine disputes of material fact exist as to (1) whether Applicant’s AFΩ mark is sufficiently similar to Opposer’s pleaded OMEGA marks so that when relevant consumers are confronted with Applicant’s AFΩ mark the mark conjures up an association with Opposer’s pleaded OMEGA marks”). This issue is also discussed in Chapter 10, §IV.G.94 USPQ2d 1294 (T.T.A.B. 2010).Id. at 1298–99.Id. at 1298.599 U.S. 140 (2023). Id. at 161–62.877 F.3d 1330, 125 USPQ2d 1072 (Fed. Cir. 2017), aff’d, 588 U.S. 388 (2019). Id. at 1348–49. Id. at 1348. See generally Vidal v. Elster, 602 U.S. 286 (2024).See Pepsico, Inc. v. Pet C Cola Corp., 2023 WL 3775398 (T.T.A.B. June 1, 2023) (non-precedential) (Pepsi-Cola likely diluted by Pet C Cola); Spotify AB v. U.S. Software, Inc., 2022 WL 110251 (T.T.A.B. Jan. 10, 2022) (Potify mark likely to dilute Spotify); New York Yankees P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497 (T.T.A.B. 2015) (sustaining opposition to parodies of Yankees TopHat logo and The House That Ruth Built marks); Research in Motion Ltd. v. Defining Presence Mktg. Grp., Inc., 102 USPQ2d 1187 (T.T.A.B. 2012) (CrackBerry found likely to dilute); Nike, Inc. v. Maher, 100 USPQ2d 1018 (T.T.A.B. 2011) (Just Jesu It found likely to dilute); National Pork Bd. v. Supreme Lobster & Seafood Co., 96 USPQ2d 1479 (T.T.A.B. 2010) (The Other Red Meat found likely to dilute).114 USPQ2d 1497 (T.T.A.B. 2015). Id. at 1509 (citing and discussing Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 84 USPQ2d 1969 (4th Cir. 2007)). 582 U.S. 218 (2017). Id. at 223; id. at 247–48 (Kennedy, J., concurring). The Court followed up Tam with a decision striking down the bar to registering immoral or scandalous marks, also on viewpoint discrimination grounds, in Iancu v. Brunetti, 588 U.S. 388 (2019).In re Brunetti, 877 F.3d 1330, 125 USPQ2d 1072 (Fed. Cir. 2017), aff’d, 588 U.S. 388 (2019). The TTAB generally refuses to hear constitutional challenges to a refusal to register. See generally David S. Welkowitz, Trademark Trial and Appeal Board, Meet the Constitution, 27 Fordham Intell. Prop. Media & Ent. L.J. 509 (2017). However, if the Federal Circuit were to rule that parodies must be given protection against dilution claims in order to prevent a First Amendment violation, one presumes that the TTAB would follow the Federal Circuit’s direction. On the other hand, that is less likely after the Supreme Court’s decisions in Jack Daniel’s Props., Inc. v. VIP Prods. LLC, 599 U.S. 140 (2023) and Vidal v. Elster, 602 U.S. 286 (2024). In particular, Elster indicates that while tarnishment claims conceivably could be regarded as viewpoint-based, blurring claims probably would not, and would be subject to a lower level of scrutiny.See Chapter 10, §VII.A. 15 U.S.C. §1069. See, e.g., Ava Ruha Corp. v. Mother’s Nutritional Ctr., Inc., 113 USPQ2d 1575, 1580 (T.T.A.B. 2015); Lesaffre Yeast Corp. v. ICC USA, Inc., 2019 WL 1916113, at *2 (T.T.A.B. Apr. 26, 2019) (non-precedential).Ava Ruha Corp., 113 USPQ2d at 1584. 2023 WL 4261426 (T.T.A.B. June 23, 2023).Id. at *5–9.Id. at 1582 n.15 (declining to decide definitively because progressive encroachment was not demonstrated). 2024 WL 2863444 (T.T.A.B. June 6, 2024).Id. at *4–6.The Federal Circuit’s appellate jurisdiction includes nonexclusive jurisdiction over appeals from the TTAB under the Trademark Amendments Act of 1999. 15 U.S.C. §1071(a)(1).330 F.3d 1333, 66 USPQ2d 1811 (Fed. Cir. 2003).Id. at 1343, 1344.330 F.3d at 1341 (referring to 15 U.S.C. §1125(c) of the FTDA) (citation omitted).See, e.g., id. at 1343 (noting that §1063, the opposition section, does not provide concurrent use proceedings, and that opposition is limited to those damaged “as a result of dilution under section 1125(c)”; rejecting use of state statutes as a basis for opposition, noting that opposition is limited to “dilution under section 1125(c),” which does not include state law).See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1374–75, 73 USPQ2d 1689 (Fed. Cir. 2005) (noting that fame for confusion purposes is not as high a standard as fame for dilution purposes). It should be noted that in appeals from district courts—which would be patent cases that include trademark claims—the Federal Circuit will apply the trademark law of the circuit in which the district court is located. Payless Shoesource, Inc. v. Reebok Int’l, Ltd., 998 F.2d 985, 987, 27 USPQ2d 1516 (Fed. Cir. 1993).668 F.3d 1356, 101 USPQ2d 1713 (Fed. Cir. 2012).Id. at 1376.Id. at 1372.Id. at 1373.Id.Id. at 1375.Id. The court also upheld the TTAB’s rejection of evidence as to the distinctiveness of Coach’s hangtag as irrelevant and insignificant. Id. at 1375–76.The court did note that its decision was based on the record before it, and did not preclude a finding of fame on different evidence. Id. at 1376.