Trademark creation and use are both essential for the success of modern businesses. Trademarks are logos, words, phrases, designs, marks, and other things that consumers use to identify a business as the commercial source for goods or services. Trademarks are generally registered and can be valid for as long as the trademark is being used in commercial activity. Under U.S. trademark laws, trademarks are legally protected from being infringed upon by others using the same trademark or a trademark that is confusingly similar.
Additionally, when a trademark becomes “famous,” the trademark gains further legal protections against “dilution” — which means that the “power” of the trademark is reduced by its association with other trademarks, products, or activities. There are two types of dilution. First, there is dilution by blurring, where the famous trademark is used with other products and services, blurring the association of the famous mark with its primary commercial product/service. An example might be “Barbie BBQ Sauce,” which, over time, will tend to blur the famous trademark’s association with a particular type of child’s doll. Second, dilution by tarnishment occurs when the famous trademark is associated with something unsavory, distasteful, objectionable, illegal, or scandalous. An example might be “Budweiser Adult Theater Productions.”
As noted, to be eligible for these additional legal protections, a trademark must be deemed “famous.” So, the question becomes: how to prove a trademark is “famous.” The experienced Trademark Attorneys here at Revision Legal provide a discussion of that question below.
First, it is NOT enough to show that a trademark has been in use for many, many years. Whether a trademark is “famous” is a fact-based question for the courts to decide, and years-in-use is only one factor considered by the courts.
Second, “famous” is based on fame and recognition in the wide commercial market, not based on fame in a narrow niche market. A brand of horse polo mallets might be known to every enthusiast of the sport — famous — but the trademark will never be “famous” in the trademark sense, given that there is no mass market for horse polo.
Under the U.S. trademark laws, courts are to look at various factors. As noted, the length of continuous use of the trademark is one factor. The other statutory factors are:
- Extent and geographic use of the trademark — a trademark used mostly on the West Coast of the United States is unlikely to be deemed “famous”
- The amount, volume, and geographic extent of sales of goods/services associated with the trademark — a product that sells 1 million units a year is likely to be more famous than a product that sells only 1,000 units
- Extent and geographic reach of advertising and publicity for the trademark
- Extent of the general public’s actual recognition of the trademark — as a matter of evidence, this can be shown by polling and survey data
- Registration on the Principal Register administered by the U.S. Patent and Trademark Office and length of time on the Principal Register — registration is not legally required, but registration is a positive factor when considering the fame of a trademark
These statutory factors are not exclusive, so there may be other types of evidence that can be used to show that a trademark is famous. One possibility is to provide evidence that the trademark has significant engagement on social media – likes, mentions, shares, etc. – and/or in more traditional media (books, magazines, newspapers, etc.). Another possible option, if available, is to present evidence that the trademark at issue has been deemed “famous” in different legal proceedings. If the trademark is used internationally, the same may be said if a foreign, non-U.S. court has deemed the trademark to be “well-known.”
Contact The Trademark Attorneys At Revision Legal
For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.
