An edited version of this article was originally published in the Fall 1985 issue of the Entertainment and Sports Lawyer of the American Bar Association's Forum Committee on the Entertainment and Sports Industries.
Comments are generalizations and may not apply to every situation. It is advisable to consult with a competent professional before relying on any written commentary. Paul D. Supnik is a member of the State Bar of California and not of any other state or country. The material set forth herein is not for the purpose of soliciting any engagements where to do so would be to offend or violate the professional standards of any other state, country or bar. This web site Copyright 1985 by Paul D. Supnik
Trademark dilution laws are state enacted laws which protect distinctive marks from injury to reputation and from tarnishment. Dilution laws establish rights related to trademark infringement, but differ in purpose, proof required and remedies available. These laws are of particular importance in the merchandise area.
Unauthorized goods which bear marks similar to those established in connection with merchandising properties may be stopped by dilution statutes when ordinary trademark laws are not be applicable. This article will discuss dilution statutes and trends, as well as a new merchandising right available in California appended to the existing California dilution statute.
Rights granted in a merchandising license typically are enforced by remedies provided by the legal theories of trademark infringement,1 violation of Section 43(a) of the Lanham Act2, unfair competition,3 and trademark dilution.4 as well as rights of publicity5 and copyright.6 Trademark related rights are important, but in some situations, enforcement is difficult as a result of an inability to prove likelihood of confusion.
A prerequisite for obtaining relief from trademark infringement or unfair
competition is that there be a likelihood of consumer confusion as to source
or sponsorship of the goods would be infringing. While some courts might
infer that likelihood of confusion of source or sponsorship exists,7
others have required more tangible proof of likelihood of consumer confusion.8
Consider, for example, allegedly infringing goods which conjures up
the mark of the licensor. If the allegedly infringing activity simply conjures
up the licensor's mark, that may not be infringement.9 If the
consuming public purchases the allegedly infringing goods because they
want goods emblazoned with a mark, that may not be infringement. Determination
of likelihood of confusion is generally based on the judge's own experiences
as to what he or she thinks of the public's perception of the alleged infringing
activity. Yet proof is required even if it only be a statement of similarities
set out in declarations filed in a motion for injunction.
If the mark is merely "functional", and does not designate source or
sponsorship, trademark infringement will not be present. Thus, goods bearing
a mark which function to give the purchaser an opportunity to simply show
the goods with the mark to their friends and show off the mark to people
passing on the street may be functional. The mark "functions" as something
other than source identification or sponsorship. The mark may be a status
mark,10 the mark may be a trendy fad or slogan, or the mark
may be something with which the public wishes to identify. To convince
a court of trademark infringement, the court must be convinced that the
public is likely to believe that the goods are sponsored or endorsed by
the source or sponsor traditionally associated with that mark beyond being
merely decorative or "functional".
Thus, a bracelet with the slogan DAMN I'M GOOD was not subject to an
action for trademark infringement, as the slogan was considered "functional"
--people purchased it, not because of its sponsorship or source, but because
they simply wanted to be able to wear the slogan.11 In the JOBS
DAUGHTERS case,12 fraternal jewelry bearing insignia of the
organization was not licensed or sponsored by the organization, likelihood
of confusion rejected and injunctive relief originally granted in the District
Court was reversed on appeal. In University of Pittsburgh v. Champion Products,
Inc.,13 collegiate sportswear bearing the nickname of the university
team was not considered to be infringing since likelihood of confusion
was not proved. The court considered that the public who purchased the
goods did so because they wanted to identify with the mark on the goods,
with the school or the organization, but did not care as to whether or
not the goods were officially sponsored by the school or organization.
Other cases have held differently. Thus, in the music merchandising area,
courts have considered that since the public generally perceived rock music
groups to sponsor merchandising items and that therefore they would believe
that the allegedly infringing goods were sponsored by the rock groups,
therefore resulting in deception to the consumer.14
What can a cause of action for dilution do for the merchandising licensor?
It can be the basis for an injunction without the necessity of proving
likelihood of confusion. It can provide a backup basis for the court to
grant an injunction if trademark infringement is not proved. All that is
necessary is that there be proof that the mark has a tendency to injure
its reputation by diluting its distinctiveness of the mark, or to tarnish
NATURE OF DILUTION
Trademark stems from the law of deceit and its purpose is to prevent
the public from deception and confusion. Dilution, is more like the tort
of trespass, and establishes a right of the trademark owner in gross, without
the necessity of showing deceit or confusion. One favoring strong unfettered
rights in the trademark owner might be an advocate of the dilution statutes.
The dilution concept is a nebulous one difficult to grasp. How can one
determine when a usage tends to "dilute the distinctiveness" of a mark?
Traditionally, only certain types of cases have been appropriate subjects
of enforcement by to dilution laws. One category is where a very famous
status mark is used in connection with non competitive goods such as ROLLS
ROYCE on radio tubes,15 KODAK on bicycles16 and TIFFANY17
in connection with a restaurant.
A second traditional area where dilution statutes have been used is
to prevent tarnishment. This is often said to occur in connection with
marks which are applied to the "adult" industries, such as motion pictures
and the like. In both cases, to some extent, it may be difficult to convince
a court that the public is not likely to believe that so prestigous a firm
would sponsor the other activity, particularly in the "adult subject matter"
situations18 or other areas distasteful to trademark owner.19
The public is not being harmed by deception. Yet with dilution statutes,
it is possible to stop that use. A claim will generally be stated where
the image imposed on the consumer is likely to leave a bad taste or connotation
or come close to something like trade libel.
MERCHANDISING MARKS ARE IDEAL CANDIDATES FOR ENFORCEMENT BY DILUTION
Merchandising marks are those which are generally inherently distinctive.
They are also marks applied to goods purchased by consumers for the purpose
of showing others the consumers' desire to identify with the merchandised
mark--though not necessarily an official sponsor and thus tend to have
a more dominant "functional component".20
Thus, merchandising marks may be ideal candidates for the remedy of
dilution--when available. The concept of dilution is controversial, as
it completely bypasses the concepts of trademark law requiring likelihood
of confusion. Trademark infringement laws protect the public, and incidentally
protect the owners of the marks. Dilution laws, on the other hand, directly
protect the owner of the mark, in gross. Why should a court interfere with
free enterprise and business dealings(other than enforcing specific contractual
relations between licensors and licensees) unless there is a public interest
involved? Only if the public is injured by deception, or likelihood of
confusion, should a court step in to interfere in business dealings. Trademark
law has developed over a long period of time and why should this concept
completely bypass the likelihood of confusion requirements of the trademark
The case against expansion of the dilution doctrine was articulated
by Professor Milton Handler at the 1985 United States Trademark Association
Meeting in San Antonio, which speech was reproduced in an article in the
Trademark Reporter.21 The concern raised was at least in part
in response to a growing awareness of the dilution statutes and a greater
and broader use of these statutes by the courts in recent years.
DILUTION LAWS ARE STATE STATUTES
Trademark dilution, a concept not present in the federal Lanham Act,22
has been adopted by about half of the states in the country.23
Traditionally, dilution statutes were enforced only for exceptionally strong
marks24. The remedy for dilution typically is limited to injunctive
relief as opposed to damages.25
THE APPARENT TREND--BROAD INTERPRETATION AND GREATER FREQUENCY
Dilution laws provide injunctive relief against noncompetitive products.
Two important developments in the dilution area have occurred. The first
is a trend toward broader interpretation26 and the second is
a recent amendment to the California dilution statute27 effective
January 1, 1986. This parallels in some manner California's right of publicity
statute28 creating in effect a limited property or merchandising
right in a registered trademark though does not set forth a catalog of
exemptions which might adequately protect and circumscribe First Amendment
related rights.This new dilution right does enhance the ability to formulate
an effective remedy for those who appropriate merchandising properties
Limitations on the enforcement of the dilution statute are exemplified
by, for example, AMF, Inc. v. Sleekcraft Boats, in which the mark SLEEKCRAFT
was not held to be strong enough to be diluted. The court found that the
evidence did not show that the use of the defendant's mark would tarnish
plaintiff's image.29 In another case, GODZILLA was not entitled
to protection against dilution against the mark BAGZILLA when used in connection
with plastic trashbags.30 Similarly, the mark CELLINI as used
in connection with pipes and tobacco products was held not strong enough
to be diluted by the use of the mark in connection with cosmetics and men's
clothes, under the Illinois Anti-Dilution Act.31 The original
California Anti-Dilution statute speaks of "the distinctive quality of
a mark".32 The New York statute requires that plaintiff must
first possess trademark or name that is of truly distinctive quality or
one that has acquired secondary meaning in the mind of public.33
LIKELIHOOD OF CONFUSION AND COMPETITION ARE NOT REQUIRED
The original California dilution statute has been held not to require
confusion. The focus is on the damage to the mark's inherent value as a
symbol rather than whether consumers have been misled as to origin or sponsorship.34
The purpose of the dilution statutes was noted by the Southern District
of New York in Aris-Isotoner Gloves, Inc. in which it stated:
"The New York statute authorizes injunctive relief where there is a
"[l]ikelihood of injury to business reputation or of dilution of distinctive
quality of a mark or trade name. N.Y. Gen. Bus. L. ~368-d. As the New York
Court of Appeals has noted, '[t]he evil which the legislature sought to
remedy was not public confusion caused by similar products or services
sold by competitors, but a cancer-like growth of dissimilar products or
services which feeds upon the business reputation of an established distinctive
trademark or name.' Allied Maintenance Corp. v. Allied Mechanical Trades,
Inc., 42 N.Y.S.2d 538, 544, 399 N.Y.S.2D 628, 632, 369 N.E. 2d 1162, 1165,
198 U.S.P.Q. 418 (1977)."35
Warner Bros., Inc. v. American Broadcasting Cos., Inc.36
included, inter alia, a claim under the New York Dilution Law. Likelihood
of confusion as to source was unnecessary, the court noting that the mark
must be one of sufficient distinction to warrant the statute's special
protection, and there must be blurring or tarnishing of the mark sufficient
to constitute dilution. This case involved an action related to the use
of "The Great American Hero" brought by those claiming ownership of "Superman".
Similarities involved the use of capes, the Great American Hero, having
a red and black outfit similar to Superman's red and blue costume. The
"Even if we assume that the Superman character and related indicia function
as trademarks with the requisite distinctiveness, plaintiffs have failed
as a matter of law to present a triable issue as to the blurring or tarnishing
of their marks. ... Even if Superman's trademarks are not as indestructible
as the character that spawned them, no reasonable jury could find that
the Hero series or 'promos' blurred or tarnished those marks."37
In Sally Gee, Inc. v. Myra Hogan, Inc.,38 SALLY GEE v. SALLY
LEE, the court determined that the marks were not likely to create consumer
confusion because of noncompetition in the marketplace and therefore there
was no trademark infringement. While pointing out that likelihood of confusion
and competition is not necessary for dilution claims, the lower court found
no instances of any tarnishing of products reputation. No evidence on a
"blurring" theory of product indentification was presented, no conjuring
up of the plaintiff's mark was established and no predatory intent was
A TREND TO BROADENED ACCEPTANCE?
There has been a recent trend in the law for the courts to rely on dilution
statutes in granting injunctive relief. Perhaps the most striking example
of this was the case last year of Hyatt Corp. v. Hyatt Legal Services in
which the Seventh Circuit held that the "HYATT" mark was sufficiently distinctive
to warrant protection.39
Oregon has held that their dilution statute was sufficient to enable
WEDGEWOOD to be able to be used to prevent its use in connection with a
"Where tradename owners have created a favorable association between
their name and their product, they possess a valuable marketing tool. This
aura of recognition enhances the value of plaintiff's name. Subsequent
use of the name with a nonrelated product broadens the association linking
name and product in the minds of consumers of plaintiff's product and diminishes
the specific association plaintiff seeks to foster. '[U]nrelated use erodes
selling power by destroying the automatic identification of the trademark
with the original product and the favorable images created by advertising.'
Greiwe, Antidilution Statutes: A New Attack on Comparative Advertising.
72 Trademark Rep 178, 186 (1982)."41
The trademark dilution laws are a creation of state statutes. They are
not a part of the Lanham Act.42 The dilution laws come into
play typically in a trademark infringement lawsuit where the plaintiff
has difficulty in establishing competition between the parties or likelihood
of confusion. Courts have previously hesitated to apply the dilution doctrine
literally, less it "swallow up" the whole trademark law, and have thus
reserved its use for situations where there has been a high level of distinctiveness.
Courts have been quick to apply the doctrine where "tarnishment" is
likely.43 In Pillsbury Co. v. Milky Way Productions, Inc., the
court granted injunctive relief for the use of the Pillsbury Doughboy characters
used in a sexually explicit parody in Screw magazine, while denying copyright
infringement claims based on the grounds of fair use. It would appear that
First Amendment considerations should apply here, or that some form of
a fair use or First Amendment argument would be equally applicable in a
trademark context, where there is even a weaker policy argument for enforcing
rights than in the copyright arena.44
PUBLIC POLICY BEHIND THE TRADEMARK LAWS
The primary difficulty in using trademark and unfair competition statutes
in connection with the merchandising area has been with the nature of the
trademark laws themselves.45 They were initially enforced and
enacted on the basis of protection of the consumer. There should be no
reason for the government to interfere in free enterprise absent some compelling
benefit to the public. Enforcement of other types of intellectual property
arise out of different policy considerations. In the copyright area, the
copyright law is based on the constitutional mandate:
"The Congress shall have Power ... To promote the Progress of Science
and useful Arts, by securing for limited Times to Authors and Inventors
the exclusive Right to their respective Writings and Discoveries.46
The copyright proprietor creates, and is given the limited right to prevent
copying. That right does not go so far as to protect ideas, but only the
embodiment and expression of those ideas. In the patent area, rights are
based on the same constitutional mandate from which Congress has enacted
legislation. There, there may be a potentially broader, yet limited monopoly
granted in exchange for the disclosure to the public of ones inventions.
However, the trademark laws are not rooted in that same section of the
Constitution. The Lanham Act is based on the Commerce clause of the Constitution.
The original basis for the trademark laws is to prevent the public from
deception and confusion as to the source or origin of goods and services.
In vindicating the rights of the trademark owner, the public is also served
by the prevention of deception. In a sense the public is served by granting
strong trademark rights to the owner of a mark, as this is said to facilitate
brand recognition and prevent deception to the public. However, absent
likelihood of confusion, the trademark laws are generally not enforced.
Thus in International Order of Job's Daughters v. Lindeberg,47
the Ninth Circuit refused to grant an injunction against the maker of so
called "fraternal jewelry" because the consumers of the jewelry did not
purchase the goods because of their concern over the source, origin or
sponsorship of the jewelry, but because they wished to be identified with
the jewelry. Similarly, an ornamental word message DAMN I'M GOOD on a bracelet
was considered not to have trademark significance.48 In University
of Pittsburgh v. Champion Products, Inc.49 the insignia PITT
as used on t-shirts was held not to create a likelihood of consumer confusion.
Of significance in both the Jobs Daughters case and the University of Pittsburgh
cases were the issues of laches and the inordinate length of time that
the defendants had used the marks without license from the plaintiff. However,
the U.S. Patent and Trademark Office has recognized that the public expects
that certain types of decorative uses of visual material and words can
indicate to the public sponsorship of goods. Thus, registration was ultimately
allowed in the MORK and MINDY case for artwork appearing on decals for
THE AMENDED CALIFORNIA STATUTE--A NEW MERCHANDISING RIGHT
In addition to the traditional trademark dilution provision, the new
California statute adds paragraph (b) to the existing dilution statute
and provides that one who infringes:
"irrespective of whether the mark is used primarily as an ornament,
decoration, garnishment, or embellishment on or in products, merchandise,
or goods, for the purpose of enhancing the commercial value of, or selling
or soliciting purchases of, products, merchandise, goods or services, ...
shall be subject to an injunction."51
The purpose of this statute is to provide a rather clear remedy for
unauthorized collateral product merchandising. It fills the gaps left by
traditional trademark and dilution statutes. It does not matter if the
mark is applied in a decorative manner and it does not matter that the
usage by the defendant is not trademark usage.
TRADEMARK REGISTRATION IS A PREREQUISITE
A prerequisite for using the new paragraph (b) (establishing the merchandising
right), though not the original and still existing paragraph (a) of the
California statute, is that the mark be registered either with the U.S.
Patent and Trademark Office or with the California Secretary of State.
No requirement of "distinctiveness" appears in this paragraph. Presumably,
a mark must be distinctive to be registrable, but the degree of distinctiveness
in supporting a trademark registration, at least traditionally was much
lower than that required to support a dilution claim.52
Assume a state court registration has been made. It is not clear the
extent and effort taken to insure that the marks registered with various
offices of Secretary of State are truly distinctive. A typical application
fee of $10 is not sufficiently significant to warrant the government to
consider each registration in depth.
Typically state registration is inexpensive and fast. Marks tend to
be rejected less frequently at the state level than at the federal level.
The filing fee at the U.S. Patent and Trademark Office is currently $175
and that of the various states ranges generally from about $10 to $25 though
occasionally more. While a state registration may be had in a few weeks,
a simple federal registration, which currently are being obtained relatively
rapidly compared to a few years ago, may still take 6 months to a year.
DILUTION AND MOTION PICTURE TITLES
Because registration of motion picture titles has been difficult in
the U.S. Patent and Trademark Office,53 in addition to the lack
of U.S. copyright protection for titles, the contractual arrangement provided
by the MPAA's Title Registration Bureau has importance. Rights in marks
in the United States are established by use of the mark after which they
may become eligible for registration. Titles of films, rather than series,
are considered to be descriptive of the film, since the title refers to
only that particular film. Thus, titles, as with other descriptive marks
are generally considered not to be registrable as such. Once a film acquires
a secondary meaning, it may be possibly for the film title to be registered,
at least indirectly, perhaps by usage in connection with other goods, with
the Patent and Trademark Office. Titles of series are specifically registrable.
Should the new California dilution laws be adopted elsewhere, it may then
become beneficial for titles to be registered in some manner, if it appears
that the title will have merchandising potential.
Is the use of the parody of a title of a motion picture distributed
by a major studio in connection with an adult film title confusingly similar?
Probably not as it is unlikely that the public would believe that one was
sponsored by the other.54 Does it enhance the commercial value?
Perhaps, but probably not in the same manner as use of the mark "PORSCHE"
might enhance the sale of unauthorized sunglasses. Note that California
statute does not say that the mark has to be the same or identical in order
to be subject to paragraph (b), but only that it "infringes".
Song titles, at least in the United States, carry no copyright protection.
Generally, they may be subject to the same infirmity of book and motion
picture titles and not registered as a trademark, at least with the U.S.
Patent and Trademark Office. Song titles are protectable under common law
principles. If the title used as a mark is registered, may the use on various
merchandise products under the new California statute be enjoined based
on that registration? It would appear that the use of the title on an article
of merchandise would enhance its value.55 The key words in the
statute are "for the purpose of enhancing the commercial value of" and
"or selling or soliciting purchases of" products, merchandise, goods or
The limit of the remedies here is in providing injunctive relief. Damages
are not available, but often injunction is the more important and more
What if the selection of a film title involves the use of a word or
symbol registered as a mark? So long as its use does not enhance the commercial
value of the product, it would not fall within scope of paragraph (b).
Comparative advertising uses are specifically exempted by newly added paragraphs
(c) and (d).
Suggested legislation would have provided exemptions which parallel
the California Right of Publicity statute, for:
(1) "A play, book, magazine, newspaper, musical composition, film, radio
or television program."
(2) Material that is of political or newsworthy value.
(3) Single and original works of fine art; and
(4) An advertisement or commercial announcement for a use permitted
by paragraphs (1), (2) or (3).56
One problem area which the statute does not address is the First Amendment
issues which might be in conflict. For example, in "Stop the Olympic Prison"
poster case, critical of the Olympics, the poster was held not in violation
of the amateur sports act, as the use of the interlocking rings and the
word "Olympiad" held not a use for the purpose of trade. However, there
may be limits to which the First Amendment may prohibit enforcement.57
A related situation existed in connection with Girl Scouts of America,
Inc. v. Personality Posters58 in which the depiction of a pregnant
girl in a girl scout uniform was held to be not an infringement because
the public would not be confused as to source or origin of the poster.
It would appear that it might be easier to obtain injunctive relief in
this situation based on the new California statute, but is questionable
whether those types of prohibitions on the uses of registered marks are
in the public interest.
A graphic example of the limits of the dilution statute are illustrated by using an example of the dramatic monograph, "Advertising the Contradictions".59 The publication is a collection of advertisement montages from the 60's primarily pitting the images of sanitized commercial advertisements against images of war victims and third world tragedy. Each page of the monograph carries an advertisement which includesa famous trademark. Under standards of trademark infringement, there is no likelihood of confusion. Certainly, the public is not likely to believe that the publication is endorsed or sponsored by the owner of the marks appearing in the advertisements. Moreover, each pages carries the notice "(this is not an advertisement)". Under dilution, arguably the montages tarnish the reputation of the trademark owner by associating the mark with negative images. The 36 page monograph sells for $6.95 and obviously has a commercial purpose. But it does make a statement about commercial images of society pitted against cold realities of life outside the comforts of the United States, suggesting a nebulous cause and effect connection between the state of the world and our participation by conspicuous consumption of mass advertised consumer goods. Under the traditional dilution theory, dilution is present. However, it is suggested that it is inappropriate to enjoin dilution under the First Amendment principles perhaps of greater importance than those involved in comparative advertising cases.60 What if one of the montages was sold as a poster? Would the new merchandising right established under the California statute be applicable? The famous trademark certainly increases the value of the poster. Is the famous mark there for enhancing the commercial value of the product? Is the famous mark there to sell merchandise or to attempt to prove a point or to make an artistic statement? In any event, it would appear that whatever the characterization, the application of the dilution doctrine should not be applicable here and this should demarcate its limitations.
In the case of Conan Properties, Inc. v. Conan Pizza, Inc.,61
it was held that the mark "Conan the Barbarian" was infringed by pizza
parlors. Whether or not likelihood of confusion is found in this type of
factual situation, the new California statute would appear to present a
basis for issuing an injunction.
Assume a bar or restaurant opens with the name CASABLANCA which conjures
up the images of the film. The court finds that there is no likelihood
of consumer confusion as to source or sponsorship between the producers
of the film and the restaurant. The traditional dilution theory might not
apply, as the usage may not result in harm to the mark CASABLANCA. However,
if the use of the mark conjures up the name of the movie, it might be actionable.
Under the new California type of dilution statute, damage or injury is
not required. It only be necessary that the mark have been registered and
that the use of the mark is used "for the purpose of enhancing the commercial
value of or selling or soliciting purchase of ... goods or services ...
without prior consent..."
But the title of the movie, even having acquired a secondary meaning
has an infirmity. CASABLANCA, at least originally is primarily geographically
descriptive. Casablanca is the name of the capital city of Morocco. As
a trademark, then the title of the film is inherently a weak mark initially,
and though in connection with the film it has acquired a secondary meaning,
it is not a mark which is inherently distinctive.62
Under the trend in dilution law, it could be argued that even though
the mark is initially weak, since it has acquired significant secondary
meaning, it is now capable of being diluted. More traditional doctrine
would have it that the mark must be intrinsicly strong to support a claim
One important issue pertaining to dilution statutes in general and which
has been addressed in only a limited manner in the case law,63
is the issue of preemption.64 That is whether the federal scheme
for regulating and enforcing trademarks preempts statutory attempts by
the dilution statutes. Generally, state trademark laws are not considered
to be preempted by the Lanham act because those statutes simply enhance
or further the objectives of the Lanham Act. That may not be said necessarily
for the dilution statutes because dilution statutes are not based on a
presumption of likelihood of confusion, but disregard the concept of likelihood
of confusion and say that despite a failure to show likelihood of confusion,
if the mark tends to dilute the distinctiveness of a mark, or tarnish it,
an injunction may issue. Moreover, the dilution statutes interfere with
the registration and notice system provided for by the Lanham Act through
the federal register of marks. Must a company seeking to use a mark now
search all classes of goods to determine if a mark is available?
PREEMPTION AS APPLIED TO THE MERCHANDISING RIGHTS STATUTE
It is suggested that the new merchandising rights probably is not more likely, but perhaps even less likely to be subject to claims of preemption than the ordinary dilution statute. Only when the purpose of the use of the mark is to enhance the value, does the new California statute come into play.
Is the new merchandising right statute more likely or less likely to
be subject to claims of preemption than preexisting dilution statutes?
There are parallels to theordinary dilution statutes. In many situations,
the effect of dilution statutes are to prevent application of marks to
enhance the value of goods or services. Thus, when famous marks such as
ROLLS ROYCE are used in connection with other products, the purpose is
to enhance the value of goods and a cause of action might result under
both the ordinary dilution statute and the new California merchandising
right. The difference between the statutes and rights may lie in the following.
Dilution statutes are to stop the situation where the strong mark is conjured
up. The new merchandising right addresses the situation where the consumer
not only thinks of, in passing, perhaps, of the original mark, but is motivated
to buy the goods because the mark appears on the goods.
As a practical matter, it is generally relatively simple to obtaining
registrations in many states in the United States. While in some jurisdictions,
obtaining a state trademark registration is somewhat difficult, in many
states they are granted after a cursory search and are rejected only where
they clearly appears to be a traditional basis for not providing trademark
rights. The filing cost is generally nominal. Traditionally a state trademark
registration did not carry much in the way of substantive rights for the
owner of the mark. The state trademark registration had the effect of showing
to a state court judge the fact that the owner was concerned enough to
protect the plaintiff's rights in a mark. In some states, state registration
provides a rebutable presumption that the facts stated in the registration
certificate are true and in others, only a presumption of title. But otherwise
it did little substantive in the face of a defendants who cared to present
a case. Now, there is a greater incentive for California registration of
a merchandising property.
The expanded law of dilution is likely to provide beneficial remedies
in the merchandising areas where likelihood of confusion is not readily
proved. Prerequisites of registration for use of the new California dilution
statute should prompt greater consideration of seeking registration for
1. E.g. Wyatt Earp Enterprises, Inc. v. Sackman, Inc., 157 F. Supp.
621, 116 U.S.P.Q. 122 (S.D.N.Y. 1958).
2. 15 U.S.C. ~1125(a); see e.g. Warner Brothers, Inc. v. Gay Toys, Inc.,
658 F.2d 76, 211 U.S.P.Q. 1017 (2d Cir. 1981).
3. Wyatt Earp Enterprises, Inc. v. Sackman, Inc., supra.
4. See e.g. California Business and Professions Code Section 14430 and
New York Gen. Bus. Code ~368-d.
5. E.g. Factors Etc., Inc. v. Pro Arts, 444 F. Supp. 288 (S.D.N.Y. 1977).
6. 17 U.S.C. ~101 et seq.
7. Boston Professional Hockey Assn., Inc. v. Dallas Cap & Emblem
Mfg., Inc., 510 F.2d 1004, 185 U.S.P.Q. 364 (5th Cir. 1975), cert. denied
423 U.S. 868 (1975), reh. denied 423 U.S. 991 (1975).
8. International Order of Job's Daughters v. Lindeburg & Co., 633
F.2d 912, 208 U.S.P.Q. 718 (9th Cir. 1980), cert. denied 452 U.S. 941 (1980).
See also Universal City Studios, Inc. v. The T-shirt Gallery, Ltd., 230
U.S.P.Q. 23 (S.D.N.Y. 1986) in which MIAMI MICE parody on t-shirts held
not to infringe MIAMI VICE television series, and Hooker v. Columbia Picture
Industries, Inc., 551 F.Supp. 1060 (N.D. Ill. 1982)(T.J. HOOKER wood carver
and T.J. HOOKER television program).
9. Id. General Mills, Inc. v. Henry Regnery Co., 421 F. Supp. 359, 193
U.S.P.Q. 543 (N.D. Ill. 1976)("Betty Cooker's Crock Book for Drunks" not
enjoined, dilution doctrine not mentioned in decision).
10. See Vuitton et Fils S.A. v. J. Young Enterprises, Inc., 644 F.2d
769, 210 U.S.P.Q. 351, 212 U.S.P.Q. 85 disagreeing with the decision of
the District Court which found that the Louis Vuitton LV and fleur-de-lis
design to be "functional".
11. Damn I'm Good, Inc. v. Sakowitz, 212 U.S.P.Q. 685 (S.D.N.Y. 1981).
12. N.8 supra, 633 F.2d 912, 208 U.S.P.Q. 718 (9th Cir. 1980).
13. University of Pittsburgh v. Champion Products, Inc., 529 F. Supp.
464, 566 F.Supp. 711 (W.D. Pa. 1983), 686 F.2d 1040 (a significant component
of the decision, however, is attributable to the issue of laches. Plaintiff
had delayed in filing suit for a period of 47 years of usage by the defendant
without significant instances of confusion.
14. See Winterland Concessions Co. v. Sileo, 528 F. Supp. 1201 (N.D.
Ill. 1982) and Bi-Rite Enterprises, Inc. v. Button Master, 555 F. Supp.
1188, 1195-1196 (dictum). But in Bi-Rite, the court found that unauthorized
merchandise not only did not harm the plaintiffs business reputation but
enhanced it by operating to strengthen plaintiffs' marks. "Rather than
clouding the distinctive message of quality that plaintiffs' marks carry,
defendants provide fans of the various Performers an opportunity to announce
their allegiance to the groups, thereby publicizing the popularity of the
groups. Thus, although defendants are clearly capitalizing on the popular
appeal plaintiffs have built in their names or likenesses, plaintiffs have
failed to allege, let alone demonstrate, that such use will weaken the
appeal of their names and thereby provide a basis for relief under ~368-d."
See also the MIAMI MICE case supra at n8. As to rock music merchandising
remedies, see Clark, Andrew E., "The Trouble With T-Shirts: Merchandise
Bootlegging in the Music Industry," 6 COMM/ENT 1 .
15. Walls v. Rolls Royce of America, Inc., 4 F.2d 333 (3d Cir. 1925).
16. Eastman Kodak Co. v. Kodak Cycle Co., 15 Rep. Pat. Cas. 105 (1898).
17. Tiffany & Co. v. Boston Club, Inc., 231 F. Supp. 836, 143 U.S.P.Q.
2 (D. Mass. 1964).
18. Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 476 F. Supp. 366, 201 U.S.P.Q. 740 (S.D.N.Y. 1979), aff'd 604 F.2d 200 (2d Cir. 1979)(cheerleaders uniform used to advertise adult film); Pillsbury Co. v. Milky Way Productions, Inc., 215 U.S.P.Q. 124 (N.D. Ga. 1981); Community Federal Savings and Loan Assn. v. Orondorff, 678 F.2d 1034, 215 U.S.P.Q. 26 (11th Cir. 1982)(COOKIE JAR automatic teller v. ANNIE's COOKIE JAR adult entertainment across the street from main branch of S&L).
19. Coca Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183, U.S.P.Q.
56 (E.D.N.Y. 1972)(DRINK COCAINE poster in the familiar red and white script
of Coca Cola).
20. official sponsorship
21. Handler, Milton W., "Are the State Antidilution Laws Compatible
With the National Protection of Trademarks", 75 The Trademark Reporter
269 [May-June 1975].
22. See Hertz System, Inc. v. A-Drive Corp., 222 U.S.P.Q. 625 (T.T.A.B.
1984)(dilution not being a part of federal trademark law, could not be
used as a ground to support an opposition proceeding).
23. See Battersby and Grimes, "The Law of Merchandise and Character
Licensing" 8.06 at 8-72.
24. Walls v. Rolls Royce of America, Inc., 4 F.2d 333 (3d Cir. 1925).
25. See n.4, supra.
26. See Pattishall, Beverly W., "Dawning Acceptance of the Dilution
Rationale for Trademark-Trade Identity Protection", 74 The Trademark Reporter
289 (July-August, 1984) and "Trademark Dilution: The Need for Reform",
74 The Trademark Reporter 311 (July-August, 1984).
27. California Business and Professions Code ~14330, AB 1900, Ch. 478.
28. California Civil Code ~3344. Remedies resulting from California
legislation in the right of publicity area is beyond the scope of this
article, and are covered in Brassell, Roz and Kulzick, Ken, "Life After
Death for the California Celebrity", The Los Angeles Lawyer 10 (January
1985); and Rohde, Stephen F., "Dracula Still Undead", The California Lawyer
51 (April 1985).
29. AMF v. Sleekcraft Boats, 599 F.2d 341, 204 U.S.P.Q. 808 (9th Cir.
30. Toho Company Ltd. v. Sears Roebuck & Co., 645 F.2d 788 (9th
31. Victory Pipe Craftsmen, Inc. v. Faberge, Inc., 223 U.S.P.Q. 258
(N.D. Ill. 1984).
32. California Business and Professions Code ~14330(b).33. Plus Products,
Inc. v. Plus Discount Foods, Inc., 564 F.Supp. 984, 222 U.S.P.Q. 373 (S.D.N.Y.
34. Steinway & Sons v. Robert Demars & Friends, 210 U.S.P.Q.
954 (C.D. Cal. 1981).
35. Aris-Isotoner Gloves, Inc. v. Fownes Brothers & Co., Inc., 594
F. Supp. 15, 222 U.S.P.Q. 489, 496 (S.D.N.Y. 1983).
36. 222 U.S.P.Q. 101, (2d Cir. 1983) see also 211 U.S.P.Q. 51, 211 U.S.P.Q.
37. 222U.S.P.Q. at 114.
38. 699 F.2d 621, 217 U.S.P.Q. 658 (2d Cir. 1983); see also Estee Lauder,
Inc. v. Cinnabar 2000 Haircutters, Inc., 218 U.S.P.Q. 191 (S.D.N.Y. 1982)(CINNABAR
2000 for hair styling salons tends to dilute CINNABAR for beauty products).
39. 736 F.2d 1153, 222 U.S.P.Q. 669 (7th Cir. 1984), cert. denied 105
S. Ct 434 (1984).
40. Wedgewood Homes, Inc. v. Lund, 222 U.S.P.Q. 446 (Ore. Sup.Ct. 1983).
41. Id. at 451.
42. See generally Handler, Milton W., "Are the State Antidilution Laws
Compatible With the National Protection of Trademarks", 75 The Trademark
Reporter 269 (May-June 1985)
43. See Dallas Cowboy Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604
F.2d 200 (2 Cir. 1979), U.S.P.Q. 163, 164, n.8 (2d Cir. 1979)(dilution
by showing "sexually depraved film" using distinctive uniforms "almost
identical" with those of plaintiffs).
44. 215 U.S.P.Q. 124, 204 U.S.P.Q. 106 (N.D. Ga. 1981)
45. See generally, McCarthy, 2 Trademarks and Unfair Competition, ~~24.13-24.16
at 212-229 [2d ed. 1984].
46. U.S. Const., Art. 1, ~8.
47. 633 F.2d 912 (9th Cir. 1980), cert denied 452 U.S. 941 (1981).
48. Damn I'M Good v. Sakowitz, Inc., 514 F. Supp. 1357 (S.D.N.Y. 1981).
49. 566 F. Supp. 711 (W.D. Pa. 1983), see also 529 F. Supp. 464, rev'd
686 F.2d 1040 (3d Cir. 1982)(reversing trial courts original refusal to
grant injunction on the latches issue. The decision was ultimately vacated
on settlement of the lawsuit).
50. In re Paramount Pictures Corp., 213 U.S.P.Q. 1111 (T.T.A.B. 1982).
51. California Business and Professions Code ~14330, AB 1900, Ch. 478.
52. Application of Cooper, 254 F.2d 611, 117 U.S.P.Q. 396 (C.C.P.A.
1958), cert. denied 358 U.S. 840, 3 L.Ed. 2d 75, 79 S.Ct. 63, 119 U.S.P.Q.
53. See Dallas Cowboy Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604
F.2d 200 (2 Cir. 1979), U.S.P.Q. 163, 164, n.8 (2d Cir. 1979).
54. Tomlin v. Walt Disney Productions, 18 Cal. App. 3d 226, 96 Cal.
Rptr. 118 (1971)
55. California Business and Professions Code ~14330.
56. California Civil Code ~3344. See n.28 supra.
57. Resolution proposed by the Los Angeles County Bar Association presented to the California State Bar Conference, withdrawn upon passage of AB 1900, ch. 478.
58. Stop the Olympic Prison v. United States Olympic Committee, 489
F. Supp. 1112, 207 U.S.P.Q. 237 (S.D.N.Y. 1980).
59. 304 F.Supp. 1228, 163 U.S.P.Q. 505 (S.D.N.Y. 1969).
60. Violet Ray, "Advertising the Contradictions" (1984), P.O. Box 5332,
Berkeley, CA 94705. The fair use doctrine, well developed and now codified
in the copyright area, is not well developed in the trademark related areas.
See Apple Corps. Ltd. v. Leber, 229 U.S.P.Q. 1015 (Los Angeles Sup. Ct.
1986, Case No. C 299149)(fair use not established as a defense in Beatlemania
61. Triangle Publications, Inc. v. Knight-Ridder Newspapers, 626 F.2d
1171 (5th Cir. 1980).
62. 752 F.2d 145 (5th Cir. 1985).
63. See Angel, Dennis, "Legal Protection for Titles in the Entertainment
Industry", 52 Southern California Law Review 279, 294 (January 1979) referring
to a letter from Groucho Marx to Warner Brothers after threatening Marx
with a lawsuit for using the title of a motion picture entitled "A Night
64. See n. 21, supra.
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