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Don’t dilute trademarks

Posted: August 28, 2008 8:30 p.m.
Updated: October 30, 2008 5:01 a.m.
If you are thinking of starting a business, choosing your business name or brand name could have significant ramifications if you chose a name similar to a famous trademark because it could dilute the famous trademark.

Trademark dilution permits the owner of a famous trademark that is registered and valuable to forbid others from using that mark in a way that would lessen its uniqueness by blurring or tarnishment of the famous trademark. Generally, blurring occurs when a new trademark "blurs" another party's trademark by associating that trademark in other markets.

Tarnishment occurs by weakening another party's trademark through unsavory or unflattering associations.
In V Secret Catalogue v. Moseley, a federal court stated that Victor Moseley could not have his "little secret" with his wife anymore. In this case, Victor Moseley and his wife ran an adult novelty store in Weston, Ky. using the names Victor's Secret and subsequently Victor's Little Secret.

Victoria's Secret brought suit claiming that the Victor's Little Secret trademark blurred and tarnished Victoria's Secret image because Victor's Little Secret sold adult novelty items.

The court held that "the use of the remarkably similar ‘Victor's Secret' or ‘Victor's Little Secret' in connection with the sale of intimate lingerie along with sex toys and adult videos tarnishes the reputation of the Victoria's Secret trademark." In particular, the court found that Victoria Secret's products cultivate a sexy and playful image and that association with adult novelty items tarnishes Victoria Secret's reputation.

The court stated that tarnishment generally arises when a plaintiff's trademark is linked to products of shoddy quality or portrayed in an unwholesome or unsavory context likely to evoke unflattering thoughts of the owner's product.

However, the court did not conclude that the use of the name Victor's Little Secret blurred Victoria's Secret's brand recognition because consumers did not actually link the Victor's Little Secret name to Victoria's Secret's brand.

In Starbucks Corp v. Wolfes Borough Coffee No.01, another federal court held that a Mister Charbucks trademark did not blur or tarnish Starbucks famous trademark. In that case, Mister Charbucks sold coffee beans and other coffee products over the Internet, through mail order and to a few supermarkets in the New England area.

After reviewing both trademarks, the court found the Charbucks marks were different in imagery, color and format from the Starbucks logo and signage. Charbucks had a "mr." or "mister" on its packaging and Charbucks was used as one of defendant's coffee varieties, but not used as a stand-alone mark.

Although in these cases there was no evidence of blurring by the small business owner, it would be wise for all small business owners to consider whether their brand name is similar to a famous trademark.

Brian R. Tinkham is an attorney with the law firm of Poole & Shaffery, LLP. His column represents his own views, and not necessarily those of The Signal.


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