Professor J. Thomas McCarthy has been critical of the TTAB’s dilution decisions (few that there are), and he left a few comments on this blog regarding the recent ruling in Nike, Inc. v. Jamin Caldwell and Courtney Miles: [TTABlogged here].

Why did the TTAB , after finding likelihood of confusion, go on to plunge the dagger in again and find dilution? As usual, the Board just assumed away the statutory requirement of dilution that there be proof of a likelihood that the challenged use “impairs the distinctiveness of the famous mark.” They assume that if the accused mark is likely to create an association with the famous mark, then there must be a likelihood of impairment to the distinctiveness of the famous mark. This ignores the Supreme Court’s recognition in Victoria’s Secret that proof of association is not proof of blurring: “‘[b]lurring’ is not a necessary consequence of mental association. (Nor, for that matter, is ‘tarnishing.’)”

Picking up on the dilution point in the previous comment, my view is that the reason so many dilution claims are made both in federal courts and the TTAB is because the mark owners’ litigators are fearful of being sued for malpractice if the case is lost and they include an anti-dilution claim. An increasing number of District Court judges are throwing out a dilution count on a Rule 12(b)(6) motion because the “famous mark” allegation is just not plausible. The is dangerous to the mark owner’s case because it suggests to the judge that the rest of the plaintiff’s case is equally implausible.

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TTABlogger comment: Professor McCarthy and I have at least one thing in common – we both have degrees in “electrical engineering.”

Text Copyright John L. Welch 2020.