Posts Tagged ‘dilution’

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By: Mark R. Malek

You may recall a while ago that I posted an article about how Facebook was suing Faceporn for trademark infringement. At the time that I wrote that article, Faceporn was taken down.  I believe that the Faceporn that was the subject of that article, however, was the .com version.

This case is about a Norwegian site called Faceporn.  To tell you the truth, I’m not even sure if they are the same site, but I’m sure they are peddling the same stuff.  I’ll give you three guesses about the content!  Be that as it may, according to this CNET article, the Court in California indicated that Facebook has no case against Faceporn because there was no evidence submitted that Faceporn has corrupted anyone in California with its product.  Really?

I suppose I am a bit surprised that Facebook was not successful this time.  As you know, Facebook is notorious for a little bit of over-enforcing its trademark rights.  For example, we know that Facebook as gone after all sorts of websites that use either “Face” or “Book” in anything that even remotely resembles social networking.  I remember them going after “Lamebook” which they settled (see this article) as well as “Shagbook” (see this article), the “Facebook Of Sex” (see this article) , “FriendFinder” (see this article) and, of course, my all time favorite, “Teachbook” (see this article).

I understand that there is a desire to protect the brand, but isn’t Facebook a victim of its own success?  Would anyone be trying to play off the name if it wasn’t successful?  Of course not.  I am a bit frustrated at the notion of companies thinking that they own words, but at the same time, I am somewhat surprised that the Judge in this case did not believe that there was any damage to the Facebook trademark.  It seems as though there was at least a potential claim for trademark dilution here.

This is the perfect example, however, of the ultimate litigation tactic – spend the opponent into the ground.  As we all know from the recent IPO, although it did not go as well as planned, Facebook still has a ton of money, and access to the resources to make anyone’s life a living hell.  Don’t kid yourself about the price of the stock being in the low $30’s after being initially offered at $38.  I think they are not going to have any trouble paying their attorney bills, and I think the attorneys on these cases are not going to have much trouble paying for college tuition for their kids.

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By: Rene Dial

While I was perusing the web I ran across an article with regard to Dr. Pepper suing its oldest distributor over the Dr. Pepper trademark.  Yes, that is exactly what I was thinking… Why are they suing their own bottling company over the trademark if they are selling the corporation’s product and if there is an issue, why not pull their contract to bottle Dr. Pepper.  Okay yes, it took me a few minutes to realize they were talking about Dublin, Texas not Dublin Ireland as well.

It seems that the bottler was adding the Dublin name to the Dr. Pepper mark resulting in, you guessed it, Dublin Dr. Pepper which is causing dilution of the Dr. Pepper mark.  Using the mark in this manner would make Dublin the trademark and Dr. Pepper the generic name for the drink which as a trademark owner you do not want.  If the mark is used in this manner there is the potential for the mark to go the way of aspirin and become the name for the type of product instead of the source of the product.

According to the article I read on Dublin makes their Dr. Pepper from cane sugar unlike most other bottlers that use high fructose corn syrup.  Funny as I always thought that the different manufacturers all had to use the same formula to make the product.  The bottling company has agreed to stop bottling and distributing Dr. Pepper as part of the settlement.

I do not have a copy of the complaint or settlement so I am not sure as to how long Dublin has been using the name with the trademark to sell Dublin Dr. Pepper and related paraphernalia or else I would go a little more in detail about the case.  The coffee mugs and other related items were supposedly being sold over the internet and I can only assume that Dublin Bottling not Dr. Pepper Snapple Group was receiving the proceeds.

With the historic value of being the oldest bottler, the surrounding town’s tourism, why not come to some other agreement.  I wonder if Dr. Pepper will force the town to take down their signs?

Have a great weekend.

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By Rene Dial

Last week I talked about trademark dilution and opened up the discussion of “blurring.”  No it is not the newest Marvel super-hero movie it is actually a trademark term.  Blurring happens when a name has associations other than the product the trademark was intended for.  For example if I asked you for an apple 20 years ago there would be no doubt in your mind I was talking about the fruit.  Today if I tell you I want an apple it would be hard to ascertain whether I was asking for the fruit or a computer.  If  Fruit Inc.’s trademark was “Apple” then the computer company is blurring your association with the fruit’s trademark and diluting the mark even though the goods are totally unrelated.

15 U.S.C. 1125 (c) (2) (B) For purposes of paragraph (1), “dilution by blurring” is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:

(i) The degree of similarity between the mark or trade name and the famous mark.

(ii) The degree of inherent or acquired distinctiveness of the famous mark.

(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.

(iv) The degree of recognition of the famous mark.

(v) Whether the user of the mark or trade name intended to create an association with the famous mark.

(vi) Any actual association between the mark or trade name and the famous mark.

The Trademark Dilution Revision Act of 2006 is intended to protect a famous mark from the type of blurring I discussed above.  The big question here is how the courts are going to interpret distinctiveness and the definition of a famous mark.  We know what the courts have held previously when addressing these questions however, are those interpretations going to fit into the TDRA of 2006 and protect truly famous marks from dilution.

Next week I will address dilution by tarnishment.

Have a great weekend!


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Scott Nyman


I grew up in a small town situated on the border of Ohio and Pennsylvania. Half of the locals were fans of the Cleveland Browns. The other half were Pittsburgh Steelers fanatics. Raised as a Browns fan, I learned to hate two things, the Steelers and John Elway. The dislike of the Steelers was more or less a friendly exchange of jabs, all in good fun over the local rivalry. The hatred towards John Elway and the Denver Broncos was much more real, beginning in the mid-80’s, particularly after “The Drive.”

Unsurprisingly, I couldn’t pass on the chance to cover the latest actions of that jerk us Clevelanders call, “horse face.” Recently, Mr. Elway has demanded that a local punk band of Fort Collins, Colorado refrain from playing under their current band name, “Elway.” The band seems unmoved by Elway’s threats. They have since released a statement to

We have no intention of changing the name again. We love the name, regardless of what connotations are inferred by the listener. Surely, if the Dead Kennedys could become one of punk’s most popular bands without incurring litigation, Elway can keep their moniker and continue making so-so music for our dozens of fans to enjoy.”

It’s hard to say with which side the court may rule if this matter were to make it to trial. However, I doubt this issue will ever be argued before a judge. Staff writer and intellectual property attorney John Gentile sums up the situation well in his response to the article. I am in total agreement with his assessment of the financial hurdle the band may face in defending its right to use the mark. Gentile says,

“However, victory in court probably won’t be so much of a threat to the band Elway as money will. Trademark litigation not only involves lawyers fees, but almost always involves experts. In a trademark case, hiring an expert often starts out with a $15,000 retainer and can rapidly increase. Often, larger parties that hold a mark will threaten smaller parties with a similar mark in order to protect their own mark. Knowing that smaller parties can not afford to litigate, the larger party will force the smaller party to change its mark and therefore strengthen its own for future litigation, even if it would have lost in court. If the band Elway chooses to fight the famed footballer, they’ll likely have quite the battle ahead of them. If not, then they’ll likely agree with John Elway that if they change their name, he’ll drop his pending suit.”

A link to the punk news article has been included below:


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By: Mark R. Malek

I came across a story on the Businessweek Magazine Website that rang my trademark bully alarm.  It seems as though Entrepreneur Magazine, which publishes a magazine geared towards the interests of, wait for it, wait for it – entrepreneurs, is suing  entrepreneurs for trademark infringement.  As I was initially reading the story, I was thinking – ok, this author might not have it right.  Entrepreneur Magazine is probably only really going after folks who are putting out competing magazines and using the “Entrepreneur” trademark for their magazines.  Unfortunately, Paul Barrett did understand and was right on.

Entrepreneur Magazine’s latest victim is Daniel Castro, who operates the website  Daniel is described as being a serial entrepreneur, having started several different businesses. is website that, essentially, promotes Mr. Castro as an aid to entrepreneurs and provides tools to “corporate executives to get back to the basics of entrepreneurship.”  Entrepreneur Magazine does have a trademark for “Entrepreneur,” among many others, as used in relation to “advertising and business services, namely, arranging for the promotion of the goods and services of others by means of a global computer network and other computer online services providers; providing business information for the use of customers in the field of starting and operating small businesses and permitting customers to obtain information via a global computer network and other computer online service providers and; web advertising services, namely, providing active links to the websites of other.”

Point of order – isn’t this exactly what entrepreneurship is?  At least a part of it?  For example, “providing business information for the use of customers in the field of starting and operating small businesses.”  Is that not the same as saying “providing business information to entrepreneurs?” Seems to me that, if I were Entrepreneur Magazine, I would be somewhat careful about trying to flex some trademark muscle against folks…especially against my own customer base.  Has this trademark registration been put to the test yet?  Seems to me as though suing your target audience is not a very bright idea.  How are entrepreneurs supposed to trust anything in a magazine for entrepreneurs that involves the advice of “sue your target audience?”

Time to play devil’s advocate.  Let’s say that I am the trademark attorney for Entrepreneur Magazine, and let’s say that my client comes to me with a list of potential infringers.  On that list are three magazine publishers that include the mark “Entrepreneur” in their title, and three websites that are titled “Entrepreneur” and that each provide business information for the use of customers in the field of starting and operating businesses.  I probably advise my client to ask the magazines to stop immediately.  I probably then tell my client that it is time to do a very in-depth analysis of the websites.  My question to my client is the following: “how else do you think this website should describe their target audience, i.e., how else would you refer to someone that is starting a new business?”  If the answer is anything remotely close to “it wouldn’t make sense to call them anything but entrepreneurs,” then I ask my clients to probably reconsider going after the website, especially if the website merely incorporates the word “entrepreneur” into their title.

If your trademark is the only way to say a particular thing, i.e., your trademark becomes the generic term, then it is not protectable.  For example, the following used to be trademarks: aspirin, trampoline and escalator.  Here are a few that I just can’t believe are still around: Band Aid, Popsicle and Jacuzzi.  Seems to me as though Entrepreneur needs to watch its step here.  I’m not saying that entrepreneur is becoming generic as to magazines for business start ups, I’m just saying that a trademark registration does not give them the ability to remove the word from the lexicon.







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