Professor J. Thomas McCarthy has been a consistent critic of the TTAB’s analysis in dilution cases, particularly the Board’s failure to properly consider the issue of “impairment” or “damage” arising from the alleged dilution. He sent me the following comment for posting:

McCarthy

I wish the T.T.A.B. would stop saying that dilution of a mark can be shown merely by proving that the challenged mark causes people to think of the famous mark. In its March 31, 2016 decision in the Omega case (118 U.S.P.Q. 2d 1289, 1298) it quoted from its last year’s decision in the New York Yankees case (114 U.S.P.Q. 2d 1497, 1506). It said that dilution by blurring occurs when “a substantial percentage of consumers, on seeing the junior party’s use of a mark on its goods, are immediately reminded of the famous mark and associate the junior party’s use with the owner of the famous mark, even if they do not believe that the goods come from the famous mark’s owner.” That’s just a part of what dilution demands and is not what the statute says.

The Board’s definition is only about what constitutes “association.” This is merely one ingredient of dilution. The statute says that dilution by blurring is an association arising from a similarity in the marks “that impairs the distinctiveness of the famous mark.” Lanham Act §43(c)(2)(B). The T.T.A.B.’s definition erases this critical “impairment” or “damage” requirement from the statute.

The Supreme Court made it clear that as a matter of basic dilution theory, proof of association is itself neither proof of blurring nor proof that blurring is likely: “‘[b]lurring’ is not a necessary consequence of mental association. (Nor, for that matter, is ‘tarnishing.’)” Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 434 (2003).