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On April 28, the 3rd U.S. Circuit Court of Appeals issued its opinion in Times Mirror Magazines, Inc. v. Las Vegas Sports News, L.L.C.This 2-1 decision, purporting to resolve an issue of first impression in the 3rd Circuit, set forth that in the 3rd Circuit, a plaintiff may invoke the Federal Trademark Dilution Act to prevent a defendant from using a trademark that is “famous” in a particular niche market, though not necessarily “famous” to the general public. One member of the panel, however, would have agreed with the defendant, that the mark at issue was simply not “famous” enough to invoke protection under dilution act. In her dissenting opinion, Judge Maryanne Trump Barry warned against what she characterized as an improper broadening of the scope of the Federal Trademark Dilution Act: “The legislative history of the Act is crystal clear that Congress intended courts to be highly selective in determining which marks are famous and accorded those truly famous marks an unprecedented degree of protection.” To find that The Sporting News mark has acquired the same degree of “fame” as, for example, Buick, Kodak, or The New York Yankees defeats Congress’ deliberate design. In other words, by broadening the dilution act to provide protection for a trademark such as The Sporting News, whose “fame” is limited to the context of a niche-market, the 3rd Circuit may well have started a trend (as evidenced by other courts’ subsequent constructions of “fame”) of “diluting” the intentions of the drafters of the act, which intentions were to provide protection to only truly “famous” marks, those used on a nationwide basis and that are well-known to the public at large. “Fame” is a significant factor in determining whether the Lanham Act will provide protection against the use of similar marks by competing products or entities. Generally speaking, the Lanham Act’s tolerance for similarity between competing marks varies inversely with the fame of the prior mark. As a mark’s fame increases, the act’s tolerance for similarities in competing marks falls. The less famous the mark, conversely, the more tolerant courts are about similarities among competing marks. IS IT FAMOUS? In Times Mirror, two publications asserted the right to use “Sporting News” in their mastheads. Times Mirror, on the one hand, holds the trademark for “The Sporting News,” which it acquired in 1886. The Times Mirror publication, The Sporting News, provides information to its readership about sports — baseball, basketball, football and hockey — and has a weekly circulation of approximately 540,000 in the United States and Canada. Las Vegas Sports News, on the other hand, used the name Las Vegas Sporting Newson its weekly publication about sports wagering, betting and gambling. Formerly known as Las Vegas Sports News, the masthead was changed from “Sports” to “Sporting” because the publication’s focus was not solely on sports and, in fact, was distributed widely at gambling casinos. Thus, although there was some overlap in the subject matter covered by the respective publications — sports — The Sporting Newsprovided reportage about the actual sports events (and did not include any articles or information about gambling), while Las Vegas Sporting Newsprovided information about wagering and betting. Despite these significant differences in the content of the publication and the markets to which they were distributed, the District Court ruled — and the 3rd Circuit upheld the ruling — that The Sporting News was “famous” in the niche market of the sports periodicals industry, and that Las Vegas Sports News‘ use of the mark diluted the “fame” that the mark had acquired in that niche market. The court’s finding of “fame” was based on the fact that the mark had gained secondary meaning over time in the particular niche-market of sports periodicals, has a circulation of 540,000 in Canada and the United States, has been continuously published since 1886 and has pursued extensive advertising and enjoyed Internet publicity. Parting ways with her colleagues, Circuit Judge Barry disagreed that “Sporting News” was sufficiently “famous” to enjoy protection under the Federal Trademark Dilution Act. Under that legislation, enacted in 1995, the owner of a famous mark is entitled to an injunction against another person’s commercial use of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark. The dilution doctrine is founded upon the premise that a gradual attenuation of the value of a famous trademark, resulting from another’s unauthorized use, constitutes an invasion of the senior user’s property rights in its mark. One of the dilution act’s purposes, according to a leading treatise, is to grant extra protection to strong, well-recognized marks — such as Buick, Dupont and Kodak. According to Judge Barry, The Sporting News is not such a strong, well-recognized mark and is not “famous” in the same manner — it is not famous to the general public, but merely well-known in a specialized market. APPLICATION OF ‘TIMES MIRROR’ Post- Times Mirroropinions from other federal courts suggest a greater willingness to apply a more expansive reading of “fame.” In the U.S. Court of Appeals for the Federal Circuit, for example, the appeals court in Recot, Inc. v. M.C. Bectonruled that a mark’s fame can extend to affect completely unrelated goods, and can be the dispositive factor in preventing a party from using a similar mark on completely unrelated goods. 214 F.3d 1322 (Fed. Cir. 2000). Although “likelihood of confusion” is not a factor in a court’s analysis under the Federal Trademark Dilution Act (and indeed is not even necessary to present a claim for relief under that Act), the Federal Circuit’s treatment of “fame” in the Recotcase is interesting if not instructive in light of the Times Mirroropinion and Judge Barry’s dissent. In Recot, the plaintiff opposed the application for trademark registration of “Fido Lay” for edible dog treats on the basis that it was likely to cause confusion with the “Frito-Lay” mark used in connection with a wide range of well-known snack foods. In reviewing such applications, the Trademark Trial and Appeal Board must apply a number of factors, including the extent of the “fame” of the prior mark, as exhibited by sales, advertising and length of use. In the Recotcase, the Trademark Trial and Appeal Board dismissed the plaintiff’s claim, ruling that the fame of the “Frito-Lay” mark extends no further than the products with which the marks are currently used, and that the goods (human snack food versus dog treats) are unrelated in kind — therefore, no likelihood of confusion would arise between the two marks. To the Trademark Trial and Appeal Board, the “fame” of the Frito-Lay mark was not such an important factor because the goods at issue were so different in nature. The Federal Circuit reversed, rejecting the rulings and criticizing the board’s failure to consider the relatedness of the products in the minds of consumers. Noting that “famous” marks enjoy a wide latitude of legal protection, the Federal Circuit found that the board had improperly discounted the mark’s fame: “Famous marks are accorded more protection precisely because they are more likely to be remembered and associated in the public mind than a weaker mark.” By linking “fame” to the mark’s “associati[on] in the public mind,” the Recotcase in one way actually reinforces the position held by dissenting 3rd Circuit Judge Barry in Times-Mirror. By criticizing the Trademark Trial and Appeal Board for failing to accord the proper weight to the fame of the “Frito-Lay” mark, the Federal Circuit relied on the fact that the general public had a strong association with the mark “Frito-Lay.” It defined a “famous mark” as one that “casts a long shadow which competitors must avoid.” This coincides with one of Judge Barry’s arguments that truly “famous” marks are strong, well-recognized marks like Buick, Dupont and Kodak — and, by extension in Recot, Frito-Lay — that “cast a long shadow” and are thereby deserving of special protection. DISTRICT COURT APPLICATION Within the 3rd Circuit, district courts have followed the 3rd Circuit’s lead in applying the “fame” factors broadly and in favor of finding “famousness.” In Deborah Heart & Lung Center v. Children of the World Foundation Ltd., 99 F. Supp. 2d 481 (D.N.J. 2000), for example, Judge Jerome B. Simandle in the District of New Jersey ruled that the plaintiff had made a sufficient showing of “fame” for dilution protection under the dilution act. In that case, the mark in question was “Children of the World,” which was used by two entities that provided medical services and conducted fundraising and charitable activities under two different programs in the Greater New Jersey/New York metropolitan area. The fundraising and charitable activities on behalf of the “Children of the World” programs benefited children from underdeveloped countries in need of specialized medical expertise. Judge Simandle deemed “Children of the World” to be “famous” within the fields of medicine and/or medical charities, based on the totality of factors listed in the act: The plaintiff had used the mark “Children of the World” for nearly 30 years and had publicized its pediatric surgical services for children over many years in connection with the mark. Intensive fundraising for the program had been conducted and news articles about the “Children of the World” activities had appeared in the region’s press. According to Judge Simandle, the defendant’s use of the confusingly similar mark “Children of the World Foundation” for essentially the same services would cause actual lessening of the plaintiff’s capacity to distinguish its program from the emerging program. In another case, Shields v. Zuccarini– a decision from the Eastern District of Pennsylvania focusing on the new Anticybersquatting Consumer Protection Act — the court assessed the “fame” of the mark “Joe Cartoon.” Although the immediate focus in Shieldswas on the new cyberpiracy prevention act and not the dilution act, the court’s analysis of the mark’s “fame” was similar to the analysis under the dilution act as it involved application of the same criteria set forth in that act. According to Judge Stewart Dalzell, “Joe Cartoon” was a “famous” mark for the following reasons: the plaintiff runs the only “Joe Cartoon” operation in the nation and has done so for fifteen years; he developed at considerable expense and has operated joecartoon.com for two and a half years and acquired fame in the marketplace. Such fame was evidenced by the fact that the Web site received 700,000 hits each month. The name “Joe Cartoon” is unique and colorful; Joe Cartoon merchandise has been sold across the country for almost ten years and is advertised on the Internet as well as in an online humor magazine with a circulation of about 1.4 million. Before the 3rd Circuit opinion in Times-Mirror, however, federal courts appear to have applied the “fame” factors more conservatively and did not find a mark to be “famous” as readily as post- Times-Mirrorcourts have done. The 9th U.S. Circuit Court of Appeals decided in August 1999, for example, that a mark must offer more than mere “distinctiveness” to prove that a mark is “famous” under the Federal Trademark Dilution Act in Avery Dennison Corp. v. Sumpton , 189 F.3d 868 (9th Cir. 1999). In that case, the presumptive distinctiveness of the surnames Avery and Dennison did not translate to “fame.” Like Judge Barry, 9th Circuit Judge Stephen S. Trott noted that “[d]ilution is a cause of action invented and reserved for a select class of marks — those marks with such powerful consumer associations that even non-competing uses can impinge on their value.” To be “famous” for purposes of protection under the dilution act, the mark must be truly prominent and renowned. Similarly, in the Southern District of Florida late last year, the court in Carnival Corp. v. SeaEscape Casino Cruises Inc., (S.D. Fla. 1999) ruled that the words “Fun Ship,” when used with “Carnival” for vacation cruises, were not sufficiently famous for purposes of trademark dilution claim. This was so because a dilution action, in contrast to a trademark infringement action, is based on the concept that a strong trademark has value beyond its ability to distinguish a good or service’s source — it protects the owner of strong, distinctive marks from diminution of consumer goodwill by competitors or non-competitors. In Carnival, even though Carnival had used the “Fun Ship” slogan since the early 1970s and spent millions of dollars promoting the mark nationally, such advertising and sales — even nationwide — did not sufficiently establish “fame” for purposes of the dilution act. More important, like the 3rd Circuit in Times Mirror, the Carnivalcourt assessed a “niche market” argument, but unlike the 3rd Circuit, rejected Carnival’s claim to “fame”: Although both entities offered entertainment on cruise ships, they offered different experiences and targeted different markets. SeaEscape, for example, offered six-hour cruises where the passengers’ main pastime was gambling while Carnival offered three- to six-day vacation trips. In light of these differences (similar to the differences in Times-Mirror), the Southern District of Florida (unlike the 3rd Circuit) declined to recognize the “fame” of Carnival’s “Fun Ship” mark. Finally, in Hasbro Inc. v. Clue Computing, Inc., 66 F. Supp.2d 117 (D. Mass. 1999), the district court ruled that legitimate use of the Internet domain name “clue.com” for computer services did not dilute the “Clue” trademark for Hasbro’s CLUE board game. Relying on the 1st U.S. Circuit Court of Appeals’ high and rigorous standard for “fame,” the Hasbrocourt rejected Hasbro’s position that its mark was famous despite the fact that Hasbro had used the CLUE mark for many years and had spent millions of dollars advertising the game, which has widespread recognition in the United States and abroad. FUTURE APPLICATION UNKNOWN In light of these cases, the 3rd Circuit in Times-Mirrormay well have parted ways with other circuits that seek to uphold the narrow purpose of the Federal Trademark Dilution Act. It is too early to tell whether other courts — in this circuit or elsewhere — will use the Times-Mirrorprecedent to further broaden the protection of the dilution act or whether, given Judge Barry’s cautionary dissent and other jurisdiction’s precedent, efforts will be made to confine the holding of Times-Mirrorto the facts of that case. What is clear is that for the moment, even largely unknown commodities and enterprises can make a claim for “fame” and acquire significant and unprecedented protection under the Federal Trademark Dilution Act previously afforded only to truly famous, renowned marks. Kelly D. Eckel is an associate in the trial department of Duane Morris & Heckscherin Philadelphia, Pa., and practices in the areas of commercial, securities, class action, intellectual property and product liability litigation.

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