One of the enduring maxims of US trademark law is : No trade no trademark. The dilution doctrine contradicts this maxim by allowing the owner of a trademark to protect that mark across the entire spectrum of commerce. This gives a brand owner property rights in a verbal or nonverbal symbol-without regard to the touchstone of US trademark law - consumer confusion.
The dilution doctine has sharply divided brand owners ever since it was first proposed. Some believe it is essential to protect famous trademarks. Others are firmly convinced that the doctrine is both unnecessary and dangerous. The Trademark Trial and Appeal Board (TTAB) may have inadvertenly demonstrated that the doctrine is indeed unnecessary and (dare I say) dangerous.
In Virgin Enterprises Limited v Albion Motor Ford Mercury(
TTAB, August 10,2007) the TTAB refused to allow an Albion, Michigan car dealer to federally register the terms VIRGIN VEHICLE, VIRGIN PURCHASE and VIRGIN SALE. Each of these terms was being used in connection with the sale of automobiles. Virgin Enterprises, the creation of Ricard Branson, opposed the attempts to register these terms. Does Virgin have many federally registered trademarks? Yes. Do any of these federal registrations identify automobiles? No.
Virgin based its objection on likelihood of consumer confusion and trademark dilution. The TTAB, after tripping all over itself to recognize the fame of the term VIRGIN , cast aside any formal reliance on the dilution doctrine while granting dilution-like protection to Virgin using the factorial analysis associated with likelihood of confusion.
This method of analysis will undoubtedly please those who believe that certain brands should be protected at all costs.
Brand not famous enough for dilution? Not to worry- your brand can be famous under likelihood of confusion analysis. Part of that fame achieved AFTER the second comer began using the same term? Not to worry. We will happily consider that fame in our analysis- though we would not be able to under the dilution doctrine.
As an advocate, one can only dream about the TTAB leaning towards one's point of view, as they did here. Brief filed a day late? Relax, we'll consider it. Lame and confusing assertion of the family of marks doctine? That's ok- the TTAB will still rely on the doctrine to support its rationale.
For years, those opposed to the dilution doctrine have argued that the doctrine is a solution looking for a problem. While hoping to limit its application they have argued that that the factors used to resolve traditional trademark disputes are flexible enough for most, if not all, the factual circumstances where dilution might otherwise be asserted.
Now that courts have restricted the scope of the dilution doctrine an administrative body like the TTAB genuflects to the flexibility of factorial analysis to silently grant dilution-like protection to brand owners who might not otherwise qualify for such protection.
But there's more....
Whenever I read cases like this I ask : What's really going on here? Or What in the world motivated them to continue this madness? Here, a small Michigan car dealer spent a boatload of money for ???? They did not need to register the VIRGIN terms. The terms were, at best, part of a secondary marketing campaign. And the dealer had been warned by The Ford Motor Company not to use the term VIRGIN in connection with its cars.