It is difficult not to talk about the absolute tragedy, disaster, or other-worldliness of the events in Charlottesville, VA. Plenty of smart people have weighed in on its implications and our President’s response. I won’t add to that dialogue. I am here to talk about Charlottesville and…trademark law.

As a Michigander, I was shocked to see a bunch of racists marching with the Detroit Red Wings’ beloved “Winged Wheel” on their little signs or shields.

Apparently, there is a group of “Identitarians” known as the “Detroit Right Wings” that “participant in regular activism related to the cause of preserving our people.” I am guessing this hate-group has no idea the famous “Winged Wheel” was created by a businessman, James E. Norrs, from (gasp) Montreal!

The Detroit Red Wings immediately shot back stating, “The Detroit Red Wings vehemently disagree with and are not associated in any with the event taking place today in Charlottesville, VA…The Red Wings believe that hockey is for everyone, and we celebrate the great diversity of our fan base and our nation. We are exploring every possible legal action as it pertains to the misuse of our logo in this disturbing demonstration.”

So, what can the Detroit Red Wings do when a bunch of no-good-white supremacists use their logo? Trademark law to the rescue!

Trademarks identify the source of goods or services. And trademark law prevents confusion in the marketplace between trademarks. For example, if Fred’s Coffee Depot was permitted to use a similar logo to Starbuck’s green goddess, consumers might be confused into buying inferior coffee. Trademark law prevents Fred’s Coffee Depot from using a similar green goddess, which attempts to eliminates confusion in the marketplace.

Unlike American citizens, not all trademarks are created equal. Some are strong and some are weak. And some are so strong that trademark law gives them special treatment. These are called “famous” marks. Famous marks are those marks “widely recognized by the general consuming public of the United States as a designation a designation of source of the goods or services of the mark’s owner.” This is a very high standard. But it is very likely the Detroit Red Wings’ “Winged Wheel” qualifies.

Because of its likely famous status, the Lanham Act prevents the “Winged Wheel” from being “diluted,” or more specifically, “tarnished.”  In short, this is when an unauthorized use of a mark tarnishes the positive associations of the famous mark. As the Second Circuit stated, “[t]he essence of tarnishment therefore is…the displacement of positive with negative associations for the mark that…reduces the value of the mark to the trademark owner.”

So, when a porn site operates at <candyland.com>, a porn star wears a Dallas Cowboy uniform in an adult file, or a t-shirt uses BUTTWEISER, the CANDY LAND, DALLAS COWBOYS, and BUDWEISER marks are being tarnished.

And when these little men march around chanting about some delusional belief in what is being taken away from them, advocating for the murder of anyone different than them, and actually murdering Heather Heyer, they are tarnishing the “Winged Wheel.” I know this is petty compared to what is happening, but here’s the point.

The Detroit Red Wings should find these bigots and sue them. Not to protect a corporate asset. But to expose facts about these hate groups. Put their names in the public. Expose their beliefs for public consumption. Make these people defend themselves. Build a record of their hate. Litigate the case to a judgment. Set precedent.

Don’t let these cowards get away with it. That’s not Detroit’s style.

Eric Misterovich is a partner with Revision Legal, an intellectual property and internet law firm.

1. http://www.freep.com/story/sports/nhl/red-wings/2017/08/14/detroit-red-wings-logo-charlottesville/564139001/
2. https://en.wikipedia.org/wiki/James_E._Norris
3. https://twitter.com/DetroitRedWings/status/896398114659217408?ref_src=twsrc%5Etfw&ref_url=http%3A%2F%2Fmashable.com%2F2017%2F08%2F12%2Fred-wings-denounce-racists%2F

Photo credit: Mykal McEldowney/IndyStar

Famous Mark Dilution Under the Lanham Act: The Full Legal Framework

The Detroit Red Wings’ trademark situation illustrates a doctrine that goes beyond ordinary trademark infringement: dilution by tarnishment. Understanding this doctrine requires examining the Federal Trademark Dilution Revision Act of 2006 (TDRA), which amended 15 U.S.C. § 1125(c), and the high standard that famous mark owners must meet to invoke its protections.

What Makes a Mark “Famous” Under the TDRA

Not every trademark qualifies for dilution protection—only “famous” marks. Under 15 U.S.C. § 1125(c)(2)(A), a mark is famous if it is “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.” The TDRA directs courts to consider: (1) the duration, extent, and geographic reach of advertising and publicity; (2) the amount, volume, and geographic extent of sales; (3) the extent of actual recognition of the mark; and (4) whether the mark was registered on the Principal Register.

This is a high standard. Regional fame is insufficient—the mark must be recognized by a substantial portion of the general consuming public nationwide. Courts have found that marks like KODAK, PEPSI, ROLEX, and VICTORIA’S SECRET meet this standard. The Detroit Red Wings’ “Winged Wheel,” with its decades of NHL prominence, its presence in markets throughout North America, and its recognition among the broad sporting public, is a credible candidate for famous mark status.

Tarnishment Versus Blurring: Two Forms of Dilution

The TDRA recognizes two forms of dilution. Blurring occurs when an unauthorized use of a similar mark impairs the distinctiveness of the famous mark—gradually eroding the exclusive association between the mark and its owner. Tarnishment occurs when an unauthorized use “harms the reputation of the famous mark” by associating it with inferior, offensive, or unsavory goods or services.

Association with white supremacist groups and hate speech is paradigmatic tarnishment. As the Second Circuit stated in Deere & Co. v. MTD Products, Inc., 41 F.3d 39 (2d Cir. 1994), the essence of tarnishment is the displacement of positive associations with negative ones. Courts have found tarnishment in cases involving: pornographic use of a famous mark, association with drugs or crime, and—directly relevant here—association with hateful or extremist ideologies that contradict the mark owner’s publicly stated values.

The Dilution Cause of Action: No Confusion Required

A critical distinction between dilution and ordinary trademark infringement is that dilution does not require a likelihood of consumer confusion. Under 15 U.S.C. § 1125(c), the owner of a famous mark can obtain injunctive relief simply by showing that the unauthorized use is likely to cause dilution—no proof of actual harm is required for injunctive relief, though actual damages require proof of willful intent to trade on the recognition of the famous mark.

This makes dilution by tarnishment particularly well-suited to situations like the Detroit Red Wings case. No one would argue that consumers are likely to confuse white supremacist marchers with the Detroit Red Wings hockey organization. Confusion is not the point. The point is that the unauthorized use of the Winged Wheel in the context of a hate march damages the positive associations the mark has accumulated over decades—associations with Detroit, with hockey, with the community the team represents.

Practical Enforcement: Why Famous Mark Owners Must Act

Dilution claims require the trademark owner to take action. The TDRA provides for injunctive relief, and courts can award attorney’s fees in exceptional cases. Beyond the legal remedies, there are strategic reasons to enforce: failure to police a famous mark can be used against the owner in future dilution cases as evidence that the mark’s reputation was not seriously harmed.

The Detroit Red Wings’ public statement—”we are exploring every possible legal action”—was the right response. Documenting the unauthorized use, sending a formal cease-and-desist letter, and filing for injunctive relief if the use continues creates a legal record that reinforces the mark’s famous status and demonstrates the owner’s commitment to protecting it.

If you own a well-known trademark and it is being used in a manner that damages your brand’s reputation, contact the trademark attorneys at Revision Legal. We litigate trademark disputes—including dilution claims—in federal courts nationwide. Contact us today.