By: Natalie Remien
We are all familiar with certain brands: Huggies, Apple, M&Ms, Sony, Gucci, Exxon, and more. We are bombarded with advertisements daily through our mobile devices and televisions that solidify this fame by drawing a strong connection in the minds of the consumers between the products and the companies who produce them. The law gives heightened protection to the owners of famous trademarks, meaning that these companies may be able to prevent others from using similar marks for a wider scope of products or services than the scope of the goods and services contained within the trademark registrations they own.
But, what is the scope of protection for a famous mark, and where does it end? Do the owners of famous brands have such broad brand extension so as to create a monopoly on these brands across all categories of products and services? This article examines the requirements to establish a mark as “famous”, the contexts in which fame comes into play, and the extent to which the owners of famous marks enjoy broadened protection.
According to the Lanham Act, in order for a mark to be considered famous, it must be “widely recognized by the general consuming public of the United States.” 15 U.S.C. § 1125(c)(2)(A). The degree of fame must exist in the general marketplace, not in a niche market. Fame that is limited to a particular channel of trade, segment of industry or service, or geographic region is not sufficient to meet that standard.
The breadth of protection and scope of famous trademarks are evaluated differently depending upon the context of the proceeding. For example, in a trademark infringement case in court, fame is a significant factor in determining the strength of a mark. However, the strength of the mark is only one factor among many. The likelihood of confusion test is an equitable balancing test and no single factor is dispositive. The role of fame in Trademark Opposition and Cancellation Proceedings is even more significant, where fame is a dominant factor, and the fame of an opposer’s mark must be “accorded full weight” in Trademark Opposition and Cancellation Proceedings. Stronger yet, is the role of fame in a Trademark Dilution litigation context, where fame of the trademark at issue is a threshold matter. Additionally, pursuant to the Trademark Dilution Revision Act, fame is a significant factor in determining whether there is a likelihood of dilution by blurring.
The following factors, if present, tend to suggest that a mark may not qualify as “famous” under the Lanham Act: (1) extensive third party use, and (2) whether the terms are in common use as marks, or whether a “distinct brand name” appears alongside the mark.
As more and more brands become “household names”, trademark owners should be aware that choosing a brand that has any connotation or sounds remotely like a famous brand, even if it is not in the relevant industry, may be problematic.
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