US Trade mark: TTAB clarifies allegation time period for dilution claims
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

US Trade mark: TTAB clarifies allegation time period for dilution claims

Recently, in Omega SA v Alpha Phi Omega, the Trademark Trial and Appeal Board (TTAB) issued a precedential decision which provided clarification concerning at what point in time a plaintiff must establish fame of its mark in order to support a claim of dilution by blurring in a TTAB proceeding. The case is significant because it may affect the ability of a prospective plaintiff to succeed on a claim of dilution by blurring in an opposition or cancellation proceeding.

In Omega SA, the plaintiff pleaded ownership of several registrations consisting of the term Omega in support of an opposition against two use-based trade mark applications filed by Alpha Phi Omega for marks which included either the word Omega or the Omega letter of the Greek alphabet, one covering jewellery and one covering apparel. Omega SA asserted two bases for its opposition, namely, a likelihood of confusion and likelihood of dilution by blurring.

In responding to a motion for summary judgment filed by the applicant, Omega SA contended that it was required only to establish that its mark became famous prior to the filing date of the applicant's application. However, since the application was based on use of the mark, the TTAB determined that plaintiff was required to establish that its mark was famous prior to the date of first use by the applicant (rather than the filing date). The TTAB noted, however, that in those circumstances where an applicant is unable to establish a date of first use for the applied-for marks, then an opposer need only demonstrate that fame existed prior to the filing date of the application.

The TTAB further clarified that a plaintiff asserting a claim of dilution by blurring must "establish that its mark became famous prior to any established, continuing use of the defendant's involved mark as a trademark or trade name, and not merely prior to use in association with the specific identified goods or services set forth in a defendant's subject application or registration". The TTAB noted that, unlike in other sections of the Lanham Act, applicable language of the Trademark Dilution Revision Act of 2006 does not limit use of a mark to any specific goods or services such that, for purposes of a dilution claim, the focus should be on any use of the mark at issue.

The result was that, for purposes of defending against a claim of dilution, the applicant could rely on its historical use of the applied-for mark in connection with goods or services other than those identified in the application. In the case at hand, the effect of the decision was to require Omega SA to claim fame over 80 years earlier, all but extinguishing the opposer's ability to sustain such a claim. Since the opposer had failed to state in its initial pleadings the date on which it alleged its mark became famous, the TTAB gave the opposer 20 days to properly plead dilution, albeit with the difficult evidentiary task of proving fame before the applicant's early first use date.

ash.jpg
Danow_Bret

Karen Artz Ash

Bret J Danow


Katten Muchin Rosenman LLP 575 Madison AvenueNew York, NY 10022-2585United StatesTel: +1 212 940 8554Fax: +1 212 940 8671karen.ash@kattenlaw.comwww.kattenlaw.com

more from across site and ros bottom lb

More from across our site

A 36-member team from Zhong Lun Law Firm, including six partners, will join the newly formed East IP Group
The Delhi High Court sided with Ericsson against Indian smartphone maker Lava, bringing the companies' nine-year dispute to a close
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Tennessee has passed the ELVIS Act, a law that fights against AI models that mimic the voice and likeness of music artists
Rob Stien, chief communications and public policy officer at InterDigital, says the EU has forgotten innovators while trying to solve an issue that doesn’t exist
As Australia’s Qantm IP leans towards being acquired by a private equity company, sources discuss what it could mean for IP firms
Law firms that are conscious of their role in society are more likely to win work, according to a survey of over 23,000 in-house professionals
Nghiem Xuan Bac Pham, managing partner of Vision & Associates, discusses opportunities created by the US-China rift as well as profitability issues facing IP practices
Douglas Leite and two of his colleagues were intrigued by Bhering Advogados’s mission to grow its patent litigation practice
Each week Managing IP speaks to a different IP practitioner about their life and career
Gift this article