Trending publication

In National Pork Bd. v. Supreme Lobster and Seafood Co., Opp. No. 91166701 (TTAB June 11, 2010) the pork industry successfully prevented an applicant from registering the mark “THE OTHER RED MEAT” for fresh and frozen salmon on the basis that granting this mark registration would dilute the fame of its own mark “THE OTHER WHITE MEAT.”

U.S. trademark owners, even those with famous marks, historically have had a hard time stopping people from adopting parodies of their trademarks on different goods. For example, a few years back, Louis Vuitton failed to stop the Haut Diggidy Dog company from selling dog treats under the mark “CHEWY VUITTON.”

In principle, the U.S. trademark laws have long offered protection to the owners of famous marks from dilution by others. However, the courts have been reluctant to put parody marketeers out of business because of a stringent test the U.S. Supreme Court announced in 2003. In the Moseley v. V Secret Catalogue case, the owners of the “VICTORIA’S SECRET” trademark for lingerie tried to stop Moseley from selling adult products under the “VICTOR’S SECRET” mark. The Supreme Court reversed the lower court decision and held that owner of the famous mark had to prove actual harm, not simply a likelihood of harm, to be entitled to relief under a “dilution by tarnishment” cause of action.

Following the Moseley decision, in 2006, Congress passed the Trademark Dilution Revision Act (TDRA), which revised the U.S. trademark laws to make it easier for trademark owners to stop free rides on the coattails of famous marks. Section 1125(c) now provides, in pertinent part:

Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.

(Emphasis added.) The TDRA, in essence, reversed the ruling in the Moseley case and lowered the bar by requiring only a showing of a likelihood of harm to obtain relief.

Section 1125(c) actually provides two causes of action: “dilution by tarnishment” or “dilution by blurring.” Tarnishment presumably addresses situations like the Moseley case, where the VICTORIA’S SECRET mark could be sullied by association with sex toys and the like. Blurring, on the other hand, addresses situations where use of the same or a similar mark on unrelated goods simply impairs the distinctiveness of the famous mark.

The TDRA also enumerates the factors that are to be taken into account when “dilution by blurring” is alleged:

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.

Even with the new statutory rights provided by the TDRA, famous trademark owners have not had a easy time preventing dilution (as the 2007 “CHEWY VUITTON” case, mentioned above, demonstrates). Few cases have gone to trial to provide clear guidance on what type of evidence is needed to prove dilution, especially dilution by blurring.

A recent decision by the U.S. Trademark Trial and Appeal Board (TTAB), however, provides a detailed roadmap for proving dilution by blurring claims. (Although the TTAB lacks the injunctive powers of federal district courts, it follows the same standards in ruling on applications for registration.) National Pork Bd. v. Supreme Lobster and Seafood Co. involved a challenge by the pork industry to the attempt by an applicant to register the mark “THE OTHER RED MEAT” for fresh and frozen salmon.

The National Pork Board is a quasi-governmental agency formed by the Pork Promotional, Research and Consumer Information Act (a.k.a. the Pork Act) of 1985 to “promote consumption of pork and pork products.” It collects a fee on all hogs sold in the U.S. and has spend over 500 million dollars since 1987 on pork “demand enhancement activities.” It owns U.S. registrations on “THE OTHER WHITE MEAT” mark for “association services namely promoting the interests of the members of the pork industry,” as well as for cookbooks, brochures about pork, pens, pencils, crayons, bumper stickers, t-shirts, sweatshirts, aprons, jackets and hats, among other things.

The Supreme Lobster and Seafood Company, on the other hand, is a bantamweight distributor of seafood to supermarkets and restaurants in the greater Chicago area.  

By seeking registration of the “THE OTHER RED MEAT” mark, Supreme Lobster essentially signed up for a cage fight with the Pork Board at the TTAB, where the proceedings follow the federal rules of civil procedure but all testimony is submitted in writing without any right to a trial by jury or opportunity to challenge live witnesses.

The National Pork Board mounted a case that one would have expected from a 900 pound gorilla. It presented testimonial depositions from its CEO, and its vice-presidents of operations, industry relations, and “demand enhancement,” as well as it former staff economist and its directors of brand strategy, retail marketing, consumer marketing, and culinary niche marketing.

Perhaps more importantly, the National Pork Board presented survey evidence that the the TTAB found persuasive on several issues. It presented a fame study conducted by Northwestern University in 2000 in which twenty-five slogans were compared in over a thousand telephone interviews. This survey concluded that “THE OTHER WHITE MEAT” slogan was the fifth most recognized slogan in the U.S. (recognized by over 80% of adult respondents) and allowed the TTAB to conclude that “THE OTHER WHITE MEAT” mark was not only famous but “part of the fabric of popular culture in the United States.”

The Pork Board also presented a dilution survey that it commissioned at the outset of the litigation in 2007. An independent survey company conducted interviews in which a screener played a recording of the Supreme Lobster slogan and then asked “Thinking about the slogan you just heard [The Other Red Meat], do any other advertising slogans or phrases come to mind?” Thirty-five percent responded with the Pork Board’s mark.

The TTAB also found the two marks were highly similar and noted that Supreme Lobster’s CEO admitted in his deposition that he knew of the Pork Board’s mark when he picked his slogan. Based on all of these factors, the TTAB concluded that the applicant’s mark, “The Other Red Meat,” was likely to dilute by blurring the Pork Board’s “THE OTHER WHITE MEAT” mark.

The TTAB decision provides very useful guidance for the owners of famous marks in terms of how to use survey evidence to prove the fame of their marks and likelihood of dilution (despite some criticism of the use of leading questions in the Pork Board’s dilution survey).

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.