Photo Courtesy of TMZ
Kanye West believes he is “Way Too Cold.” Perhaps he’s way too cool to be blamed for trademark dilution. West has released a song titled “Theraflu” along with explicit imagery that included the product. Theraflu has in no way endorsed or approved the use of their brand’s likeness or image in the manner Kanye West has used it. Shortly after Theraflu issued their statement of disapproval, Kanye officially changed the title of the song to “Way Too Cold.”
Dilution occurs when a famous trademark is used in a context in which the trademark's reputation is adversely affected or its distinctiveness is weakened. Dilution can take two forms: blurring and tarnishment.
The similarity between a famous mark and another mark may create an association between the two. This association between the two marks, or blurring, impairs the ability of the famous mark to retain its distinctiveness in a particular market. For example, Intel is best known for its production of semiconductor chips and microprocessors. If an unaffiliated company used Intel on shoes, it would cause blurring to the Intel brand.
Tarnishment is an association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark. For famous marks, tarnishment or blurring may impair their distinctiveness because of association with other similar marks.
Famous marks are well known, recognized and trusted by their consumers. However, owners challenging dilution need to establish their mark as a unique source of distinctiveness under the terms of the Federal Trademark Dilution Act. They may need to show the following: 1) geographical reach of advertising and publicity, 2) volume of sales, 3) extent of actual recognition of the mark, and 4) whether the mark is registered.
In the case of famous marks, dilution is based on use by another person of the mark with the potential for confusion. Any use by another person can cause the likelihood of confusion. The use of the name will assume affiliation with the owner of the mark regardless of the goods or services of the infringing use. The goods or services may be related or unrelated for a dilution claim to stand.
Examples of recent dilution cases include, Chick-fil-A. Chick-fil-A, owner of the tagline “Eat Mor Chikin,” has sent a cease and desist letter to stop t-shirt artist Bo Muller-Moore for his use of “Eat More Kale” because of the likelihood of confusion. Though Muller-Moore believes odds are not in his favor in the battle against the multi-billion dollar company Chick-fil-A, Muller-Moore is determined to fight until the end. He is currently working with filmmaker James Lantz on a documentary called “A Defiant Dude,” a documentary about a t-shirt artist who defies Chick-fil-A.
Chick-fil-A “Eat Mor Chikin” has battled at least 12 additional trademark applicants for their use of “Eat More…” In 2003, the tagline “Eat More Fish” was terminated after a TTAB proceeding with Chick-fil-A. In 2008, Chocolate Bar, LLC, owner of the tagline Eat More Chocolate, was forced to abandon their trademark after Chick-fil-A opposed the use. Pictured at left is the Eat-More Candy Bar, which originated in Canada as a Lowney product and was acquired by Hershey Canada from Nabisco Ltd. More trademarks that have either been abandoned or cancelled are, Eat More Goat, Eat Mor Greens and Eat More Beer. Chick-fil-A is very protective over their tagline and trademark. Regardless of opinion on these cases, brand owners can learn a thing or two about protecting and policing their brands.
Earlier this year, it was reported that all four trademark applications were rejected for Crackberry by a judge. It was ruled that the trademarks would dilute Research in Motion Ltd.’s “Blackberry” trademark.
The South Butt clothing line was intended to poke fun at the brand The North Face. The battle was settled outside of court for an undisclosed amount. This case is an example of tarnishment.
Dilution has the ability to weaken famous marks that have worked hard establishing themselves as well-known brands to their consumers. Owners of famous marks have spent millions of dollars to uphold their reputation in a consumer-based market. Dilution is a problem because it can take away the consumer trust and owner’s protection of a brand. For example, if Coca-Cola is seen on goods and services such as clothing lines, lawn mowers, financial services, and cosmetic surgery facilities across the world, it would depreciate the Coca-Cola brand. This is deemed to be one of the major issues in trademark law because dilution can put the mark’s reputation for quality and distinctiveness at risk through tarnishment.
Here are some dilution metaphors to help make a deeper connection:
• A rodent metaphor: "the very nature of dilution, insidiously gnawing away at the value of a mark." Ringling Bros.-Barnum & Bailey v. Celozzi-Ettelson, 855 F.2d 480 (7th Cir. 1988).
• A musical metaphor: "It is the same kind of dissonance that would be produced by selling cat food under the name 'Romanoff' or baby carriages under the name 'Aston Martin'." Exxon Corp. v. Exxene Corp., 696 F.2d 544 (7th Cir. 1982).
What are your examples of trademark dilution?
Nicole Briggs is a Trademark Consultant for Interbrand’s NY Verbal Identity team.