Under federal trademark law, trademarks that are deemed to be “famous” are entitled to extra legal protection. Whether a trademark is “famous” is a factual determination that includes these non-exhaustive statutory factors:
- The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties
- The amount, volume, and geographic extent of sales of goods or services offered under the mark
- The extent of actual recognition of the mark and
- Whether the mark was registered under older versions of the Trademark Act and/or whether the trademark is listed on the Principal Register under current law.
See 15 U.S.C. § 1125(c)(2)(A). Courts have routinely identified several trademarks as “famous” including Budweiser beer, Camel cigarettes, Starbucks coffee, Pepsi, and Barbie dolls.
Time is often a key factor. Thus, new trademarks are generally not “famous.” But, a new trademark can quickly become famous if sufficient advertising and marketing resources are dedicated to making the trademark well-known among the relevant consuming public. The relevant consuming public is also an important consideration. A trademark can be basically unknown to the general public, but famous to consumers in a niche market. Sometimes (but not always) that is sufficient to make a trademark “famous” for purposes of trademark law.
Why having a famous trademark matters
If a trademark (or a confusingly similar trademark) is used by some person or entity other than the owner, the owner of the trademark may sue for trademark infringement. Only the owner of a trademark may use it. The underlying legal purpose is to protect consumers from being misled in their purchasing decisions. Consumer confusion is a key element that must be proven to win a trademark infringement case. As an example, the Pepsi trademark is associated with various carbonated beverages. Use of the Pepsi trademark with something wholly unrelated to carbonated beverages — like concrete or other other construction materials — might not be trademark infringement. In this example, likely, no consumers would be confused by the different uses of the trademark.
However, if a trademark is famous, it can be protected from dilution and/or tarnishment. The underlying legal purpose is to protect the trademark, not the consuming public. Thus, the famous Pepsi trademark might be diluted by allowing its use with construction materials (even if the public is not confused). Dilution generally occurs when the famous trademark begins to lose its ability to identify and distinguish the products/services with which it is associated. Imagine, for example, if hundreds of products and services were trademarked as “Pepsi.” Eventually, because the trademark is associated with hundreds of products/services, the trademark would stop functioning as an identifier for a unique commercial source. Tarnishment generally occurs when the trademark is used with something unpleasant or scandalous. A famous example is the use of a famous sports logo by an adult film actress during her performances. This was deemed to be unlawful tarnishment of a trademark.
For more information or if you have questions about creating and registering a trademark, contact the trademark lawyers at Revision Legal at 231-714-0100.