Under the Lanham Act, dilution is actionable in two specific forms: blurring and tarnishment. Dilution by blurring occurs when a junior user’s similar mark or trade name “impairs the distinctiveness” of the plaintiff’s famous mark.¹ Dilution by tarnishment occurs when a junior user’s similar mark or trade name harms the reputation of the plaintiff’s famous mark.² Amendments to the Lanham Act made dilution a viable ground for trademark oppositions and cancellations in 1999.³ Subsequent amendments in 2006 explicitly made the test of likelihood of dilution applicable to TTAB proceedings.⁴ Since 2006, the TTAB has issued a few decisions sustaining oppositions based on dilution by blurring. No decisions have found dilution by tarnishment.

TTAB decisions finding dilution by blurring involve the easily recognizable brand names and slogans, THE OTHER WHITE MEAT for promoting interests of members of the pork industry, JUST DO IT for athletic apparel, MOTOWN for musical recordings and entertainment, and BLACKBERRY for smartphones and telecommunication services. However, dilution was not found in oppositions involving other well-known brands, such as COACH for fine leather goods and ROLEX for luxury timepieces. All of these decisions provide a better understanding of the degree of evidence necessary to sustain a dilution by blurring claim.

Lanham Act § 43(c) provides:

[T]he 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.⁵

As articulated by the Federal Circuit, to prevail on a likelihood of dilution claim, a plaintiff must prove that: (1) the plaintiff owns a famous mark that is distinctive, (2) the defendant is using a mark in commerce that allegedly dilutes the plaintiff’s famous mark, (3) the defendant’s use of its mark began after the plaintiff’s mark became famous, and (4) the defendant’s use of its mark is likely to cause dilution by blurring or tarnishment.⁶

First, a plaintiff must prove that its mark is famous. A famous mark is one “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.”⁷ The 2006 amendments to Lanham Act § 43(c) specifically eliminated “niche” fame, so a brand being well known only to a defined subset of all consumers, such as intellectual property attorneys, is not enough.⁸

To assess whether a mark is famous, the TTAB considers all relevant factors, including the four set forth in Lanham Act § 43(c)(2)(A):

1. The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.
2. The amount, volume, and geographic extent of sales of goods or services offered under the mark.
3. The extent of actual recognition of the mark.
4. Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.⁹

Fame for dilution purposes is difficult to prove, requiring a more stringent showing, compared to the fame necessary to prove a likelihood of consumer confusion for infringement.¹⁰ Fame must be shown to exist before the defendant used or applied for its mark.¹¹ Though proving fame is difficult, NASDAQ, THE OTHER WHITE MEAT, JUST DO IT, MOTOWN, ROLEX, and BLACKBERRY have successfully been proven famous before the TTAB.¹² Let’s consider the type and extent of evidence relied upon by some of these plaintiffs to show the fame of their marks.

In National Pork Board v. Supreme Lobster & Seafood Co., the National Pork Board successfully opposed the registration of THE OTHER RED MEAT for salmon based upon a likelihood of dilution by blurring of its THE OTHER WHITE MEAT slogan for association services of promoting the interests of members of the pork industry.¹³ The extensive evidence of fame included: $550 million in national advertising and marketing activities featuring the mark over a 20-year period; substantial third-party advertising through cross-promotional and cobranding activities with food manufacturers and supermarkets; nonlitigation brand tracking studies (including documentation as to survey methodologies used) showing consumer recognition at rates of more than 85 percent; a Northwestern University, nonlitigation consumer survey from 2000 showing nearly 80 percent brand awareness among the general adult population; unsolicited media coverage and pop culture references, including appearances on late night television shows, and in nationally syndicated comic strips and Hollywood movies; third-party publications discussing the brand; and appearance on published lists of famous marks.

In Nike Inc. v. Maher, Nike successfully opposed the registration of the mark JUST JESU IT for clothing based upon Nike’s ownership of the mark JUST DO IT.¹⁴ The defendant admitted in response to requests for admission that Nike’s JUST DO IT mark was famous, responding, “Who isn’t aware of Opposer’s Mark? At least in the free world.”¹⁵ Additionally, Nike’s evidence of fame included significant third-party references to and discussions about the mark in well-known newspapers and magazines, showing its presence in pop culture; presence of the slogan among listings of well-known brands; $6 billion in national advertising efforts over the course of a 20-year span, including ads in publications such as Sports Illustrated, Rolling Stone, People, and Time; use of well-known sports figures in advertising, such as Michael Jordan and Bo Jackson; significant annual sales of 180 million shoe products that include the mark on packaging; and more than 27 million units of T-shirts and other apparel featuring the JUST DO IT mark since 1989.

In UMG Recordings, Inc. v. Mattel Inc., UMG Recordings successfully opposed registration of MOTOWN METAL for toy vehicles and their accessories, based upon a likelihood of dilution by blurring of its MOTOWN mark for musical recordings and entertainment services.¹⁶ As evidence of fame, UMG Recordings relied upon use and registration of the MOTOWN mark for more than 50 years; extensive nationwide sales of its musical recordings (including gold, platinum, and multiplatinum awards certifications); numerous concerts and television appearances featuring its music and artists, who include Stevie Wonder, Marvin Gaye, The Four Tops, and Gladys Knight and The Pips; extensive nationwide promotion of its mark; operation of a retail gift store, museum, and café under the MOTOWN name; substantial third-party publicity in the form of media coverage, dictionary and encyclopedia entries, books and articles about the plaintiff, its founder, and its music; and that the popularity of the plaintiff’s recording label and artists and style of music resulted in Detroit obtaining the nickname “Motown.”

In Rolex Watch U.S.A., Inc. v. AFP Imaging Corp., Rolex opposed the registration of the mark “Roll-X” for medical and dental X-ray tables based upon a likelihood of dilution by blurring of its ROLEX mark for timepieces. As evidence of the fame of the ROLEX mark, Rolex relied upon ownership of registrations for the ROLEX mark in the United States for over 100 years; extensive sales figures in the hundreds of millions of dollars over the course of 25 years; extensive sales presence in the United States through the operation of 700 official branded jewelers; $10 million or more in annual advertising expenditures for promoting the mark in the United States since 1985; continuous and prominent advertisements in nationally circulated publications reaching the general public (The Wall Street Journal, National Geographic, Elle Décor, Gourmet, Vanity Fair) and on cable and network television; event promotion and sponsorship (Wimbledon tennis tournament and U.S. Open golf tournament); placement in Business Week’s “Best Global Brands” rankings; and significant unsolicited publicity in newspaper and magazine articles equating the brand with status and reliability.

In Research in Motion Ltd. v. Defining Presence Marketing Group Inc., Research in Motion successfully opposed registration of the mark CRACKBERRY for online retail services featuring goods related to consumer electronics and telecommunication products and various computer and online services concerning telecommunications and mobile phones, PDAs, and wireless communications.¹⁷ For support that its BLACKBERRY mark is famous, Research in Motion relied on use of the mark upon a historically significant communication device; billions of dollars of sales of BLACKBERRY branded products since 1999; tens of millions of dollars spent advertising and promoting the mark in print, television, radio, online, and billboard advertisements; and appearance in rankings of the most famous and valuable trademarks in the world in industry publications.

If a plaintiff fails to provide the TTAB with sufficient evidence of fame as defined in Lanham Act § 43(c)(2)(A), then its dilution claim fails.¹⁸ This occurred in Coach Services Inc. v. Triumph Learning LLC. In this opposition, Coach Services opposed the registration of the defendant’s mark COACH for educational materials used to prepare students for standardized tests, asserting that such marks would blur the distinctiveness of its COACH mark for luxury handbags, wallets, luggage, clothing, watches, and eyeglasses. Due to procedural deficiencies concerning the submission of evidence, Coach Services was not able to rely on its annual reports from the years preceding the defendant’s application filing dates. Coach Services intended to rely on those reports as evidence of its annual sales figures and advertising expenditures. After the Board struck the annual report evidence, Coach Services could rely only on worldwide sales and advertising figures dating from 2008. This was problematic, because 2008 was after the year in which the defendant filed its applications.

Coach Services’ evidence also included ownership of 16 federal registrations, unsolicited media attention about certain of its products and the renown of the brand, copies of Second Circuit decisions finding a hangtag of Coach Services to be distinctive, joint advertising efforts with third parties, and a brand awareness study showing high levels of aided awareness of the brand among young women. Earlier this year, the Federal Circuit affirmed the Board’s determination that the evidence of record was insufficient.¹⁹ The Federal Circuit determined that registration of the COACH mark was not conclusive evidence of the mark’s fame, the 2008 sales and advertising figures were not broken down to provide numbers specifically for the United States, many of the unsolicited media articles about the mark’s renown were dated after the defendant’s application filing dates, the brand awareness study provided no evidence of brand awareness among women generally or men, and the prior federal court decisions did not concern dilution or fame of the COACH mark.²⁰

As the Coach Services case illustrates, proving the requisite level of fame for dilution is difficult and requires substantial documentary evidence existing prior to the defendant’s applications for or use of its mark.²¹ Though not finding error with the TTAB’s findings that Coach Services had not provided sufficient evidence of fame for dilution purposes, the Federal Circuit was careful to hold that Coach Services had not established fame for dilution based on the record before it, and not that Coach Services could never establish the level of fame required for a successful dilution case.²²

While vitally important, fame alone is not enough to succeed on a dilution claim. A plaintiff also must prove that its famous mark is distinctive and that the defendant’s mark is likely to dilute the plaintiff’s famous mark by blurring.²³ Blurring occurs “when a substantial percentage of consumers, upon seeing the junior party’s use of a mark on its goods, are immediately reminded of the famous mark and associate the junior party’s use with the owner of the famous mark, even if they do not believe that the goods come from the famous mark’s owner.”²⁴

To determine whether the defendant’s mark does or will “impair the distinctiveness” of the plaintiff’s mark, the TTAB considers the nonexclusive list of six factors set forth in Lanham Act § 43(c)(2)(B):

1. The degree of similarity between the mark or trade name and the famous mark.
2. The degree of inherent or acquired distinctiveness of the famous mark.
3. The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
4. The degree of recognition of the famous mark.
5. Whether the use of the mark or trade name intended to create an association with the famous mark.
6. Any actual association between the mark or trade name and the famous mark.²⁵

The decisions concerning the COACH, THE OTHER WHITE MEAT, JUST DO IT, MOTOWN, ROLEX, and BLACKBERRY marks show how the TTAB analyzes these factors.

Degree of Similarity

For the first factor, degree of similarity between the defendant’s mark and the famous mark, the TTAB considers “whether the two involved marks are sufficiently similar to trigger consumers to conjure up a famous mark when confronted with the second mark.”²⁶ In Nike, the TTAB clarified that the analysis in dilution by blurring is the same analysis employed in a likelihood of confusion analysis—similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.²⁷ Identity of marks is not required.²⁸ The TTAB also used this analysis in the UMG Recordings and Rolex Watch U.S.A. decisions.²⁹

In Nike, the TTAB found the marks JUST DO IT and JUST JESU IT similar in overall appearance, sound (noting the similar ending sounds of the second words in each mark), and commercial impression, given the fame of Nike’s mark.³⁰ The TTAB found the defendant’s JUST JESU IT mark is sufficiently similar to Nike’s JUST DO IT mark to “trigger consumers to conjure up” Nike’s famous mark.³¹

In National Pork Board, the TTAB found the marks THE OTHER WHITE MEAT and THE OTHER RED MEAT highly similar, having the same structure and cadence, consisting of three of the same words, and likely eliciting in the minds of consumers comparisons of the promoted meats with another kind of meat.³² The TTAB also relied on survey results with 35 percent of respondents associating the defendant’s mark with the plaintiff’s mark in unaided survey responses.³³

In Research in Motion, the TTAB found the marks BLACKBERRY and CRACKBERRY to be similar, noting that “CrackBerry” had become a consumer-adopted slang term for the BlackBerry brand, prior to the defendant’s application for or use of its marks.³⁴ The TTAB found that the defendant’s CRACKBERRY mark had a connotation and commercial impression similar to the famous BLACKBERRY mark.³⁵

In the Coach Services opposition, the Board had to consider the similarity of the marks COACH for luxury leather accessories and COACH for educational materials. The TTAB found the parties’ respective COACH marks dissimilar because of their distinct meanings and commercial impressions.³⁶ The TTAB noted that the term “Coach” is a common English word with many different definitions, depending on the context.³⁷ When applied to the educational materials of the defendant, the term “Coach” brings to mind someone who instructs students.³⁸ When applied to the plaintiff’s luxury leather goods, the term “Coach” brings to mind traveling by carriage.³⁹ The TTAB found that this dilution factor favored the defendant.⁴⁰

Despite likely identical pronunciations of the marks at issue, in Rolex Watch U.S.A. the TTAB found that the different spellings of the marks ROLEX and ROLL-X resulted in different appearances, meanings, and connotations and that this dilution factor favored the defendant.⁴¹ The Board determined that consumers would likely view the defendant’s hyphenated ROLL-X mark as the words “Roll,” referring to moving on rollers, and “X,” suggesting X-rays, when used with the defendant’s goods.⁴² Testimony from the defendant’s chief executive officer supported this connotation, explaining that the defendant created the mark based on the product’s attributes.⁴³

Degree of Distinctiveness of the Famous Marks

Obviously, for purposes of dilution, the greater the degree of distinctiveness of a famous mark, the better. Not surprisingly, the TTAB found all of the marks—THE OTHER WHITE MEAT, JUST DO IT, MOTOWN, ROLEX, and BLACKBERRY—to be inherently distinctive.⁴⁴ In Nike, the TTAB noted that Nike established that its JUST DO IT mark is the kind of mark “so distinctive that the public would associate the term with the owner of the famous mark even when it encounters the term apart from the owner’s goods or services.”⁴⁵ In the Coach Services opposition, the TTAB found the term “Coach” to be arbitrary or suggestive (though not highly suggestive) when used in connection with leather accessories and that this dilution factor favored Coach Services.⁴⁶

Extent to Which Owner of Famous Mark Uses It Substantially Exclusively

In the cases concerning the marks THE OTHER WHITE MEAT, ROLEX, and BLACKBERRY, the records contained no evidence to contradict the respective plaintiffs’ exclusivity.⁴⁷ In Coach Services, the Board found that Coach Services had made substantially exclusive use of its COACH mark on leather goods.⁴⁸ The TTAB, therefore, found that this dilution factor favored Coach Services.⁴⁹

In Nike, Nike provided evidence that it vigorously enforces its rights to the mark JUST DO IT and denies all requests from third parties for permission to use the mark.⁵⁰ The defendant submitted copies of four registrations for “Just . . . It” formative marks but no evidence that those marks had been used. The TTAB concluded that it could not assess whether use of the marks covered by those third-party registrations was so widespread as to have had an impact on consumer perceptions.⁵¹ Further, the existence of the four registrations did not persuade the TTAB that the phrase “Just . . . It” is a so-commonly registered element that a mark with a different middle term should be rendered distinguishable from Nike’s JUST DO IT mark.⁵² As a result, the TTAB determined that this dilution factor favored Nike.⁵³

In UMG Recordings, the TTAB found that third-party noncommercial uses of the term “Motown,” referring to the city of Detroit, Michigan, did not diminish the plaintiff’s MOTOWN mark because the Motown nickname for Detroit arose precisely because of the fame of the plaintiff’s mark.⁵⁴ The TTAB concluded that the plaintiff’s use of MOTOWN was substantially exclusive.⁵⁵

Degree of Recognition of the Famous Mark

The TTAB unsurprisingly found that this factor favored the National Pork Board, Nike, UMG Recordings, Rolex Watch, and Research in Motion.

The TTAB was convinced in National Pork Board that the slogan THE OTHER WHITE MEAT “has become part of the fabric of popular culture in the United States”⁵⁶ The Board pointed to a third-party brand awareness study from 2000 showing that only four other consumer slogans in the United States had a greater degree of recognition.⁵⁷ Coincidentally, one of the four other slogans in that brand awareness study was Nike’s JUST DO IT mark.⁵⁸ In Nike Inc. v. Maher, the TTAB found that the record, which included unaided survey results and unsolicited media attention showing public recognition of the mark, showed Nike’s JUST DO IT mark to be “one of the most famous advertising slogans created.”⁵⁹

In UMG Recordings, the TTAB was persuaded by the substantial evidence of third-party media coverage; dictionary and encyclopedia entries; and books about the plaintiff, its history and founder, the Motown style of music, and the plaintiff’s recording artists, as well as the plaintiff’s original home city being nicknamed “Motown.”⁶⁰

In Rolex Watch U.S.A., the ROLEX brand was proven to have been consistently named as one of the top 100 brands in the world since 2001.⁶¹ In Research in Motion, the evidence convinced the TTAB that between 1999 and 2004, “the BLACKBERRY mark became one of the most prominent marks in our digital, wireless culture.”⁶² Research in Motion’s retail sales of billions of dollars of BLACKBERRY-branded products and services in the United States also supported the Board’s finding that this factor favored the plaintiff.⁶³

Whether the Defendant Intended to Create an Association with the Famous Mark

In the cases involving the marks THE OTHER WHITE MEAT, JUST DO IT, and BLACKBERRY, the TTAB considered evidence concerning the intent of the defendants to create an association with the plaintiffs’ respective marks. In National Pork Board, the TTAB doubted the defendant’s assertions that it came up with the mark THE OTHER RED MEAT out of the blue, given that the plaintiff’s mark appeared in a trademark search conducted by the defendant and was chosen to highlight the healthy and nutritious features of salmon.⁶⁴ The TTAB found that the defendant’s principals may have believed that creating an association with the plaintiff’s mark was permissible; however, such actions were consistent with a likelihood of dilution by blurring.⁶⁵

In Nike, the defendant’s principals acknowledged the fame and their awareness of the JUST DO IT slogan, but there was no direct evidence that the defendant intended to create an association with Nike’s mark. The TTAB found this dilution factor neutral “but consistent with a likelihood of dilution by blurring,” similar to the circumstances in the National Pork Board case.⁶⁶

In Research in Motion, the defendant applied for CRACKBERRY, the nickname given by consumers to the BLACKBERRY brand. The defendant intended its online services to provide a forum for users of BLACKBERRY products, and its principal confirmed that the defendant chose the term CRACKBERRY because of its strong association with the BLACKBERRY mark.⁶⁷ Thus, the Board found that this dilution factor also favored Research in Motion.⁶⁸

In UMG Recordings, Mattel witnesses explained that Mattel chose MOTOWN METAL to suggest strength and a connection with the city of Detroit as center of the U.S. auto industry. There was no evidence that Mattel intended to create an association with the plaintiff’s MOTOWN mark.⁶⁹

In Coach Services Inc. v. Triumph, according to the defendant’s testimony, the defendant adopted and used with its COACH mark the logo of a coaching figure to evoke the image of an athletic coach to make its educational materials seem more fun for kids. Without evidence that the defendant tried to create an association, and in light of the defendant’s logo, the Board found that this dilution factor favored the defendant.⁷⁰ In Rolex Watch U.S.A., the defendant’s witness testified that he chose the mark ROLL-X based upon the attributes of the defendant’s X-ray tables. The TTAB therefore found that this dilution factor favored the defendant.⁷¹

Any Actual Association between the Defendant’s Mark and the Famous Mark

The Rolex Watch U.S.A. case includes evidence of a survey conducted to show that the defendant’s ROLL-X mark would likely dilute the plaintiff’s ROLEX mark. A telephone survey was conducted for Rolex Watch of veterinarians and their supporting professionals (consumers typically responsible for purchasing X-ray equipment) to support its claim that the defendant’s use of the mark ROLL-X is likely to dilute its ROLEX mark. The respondents were shown the defendant’s mark and were told to assume they were looking at an X-ray table and encountered one using the name ROLL-X. They were asked what, if anything, came to mind when they were shown the name of the X-ray table. Eighty-two percent of respondents replied that something came to mind. Of that number, 42 percent named the defendant’s Rolex mark or watch; 32 percent named portable, movable, or rolling; 18 percent replied X-ray tables and equipment; and seven percent replied X-rays.

The TTAB found Rolex Watch’s survey methodology comported with acceptable protocols.⁷² Rolex Watch argued that 42 percent of respondents identifying its ROLEX brand provided evidence that an association in consumers’ minds between the parties’ marks was likely. The TTAB instead found these results unpersuasive, because nearly 50 percent of the respondents answering the query named a feature of the defendant’s X-ray products or the products themselves.⁷³ While the survey results indicated an actual association between the parties’ marks, the TTAB also found that the results did not establish that such an association would impair the distinctiveness of Rolex Watch’s ROLEX mark.

In National Pork Board, Nike, and UMG Recordings, the defendants applied to register their marks based upon an intent to use, and no evidence was submitted regarding an actual association between the defendants’ and plaintiffs’ respective marks.

Balancing the Dilution Factors

The winners of the TTAB’s dilution analysis are National Pork Board and its THE OTHER WHITE MEAT slogan, Nike and its JUST DO IT mark, UMG Recordings and its MOTOWN mark, and Research in Motion and its BLACKBERRY mark.⁷⁴ In each of these cases, the TTAB found that the plaintiffs successfully proved: (1) the fame of their marks, (2) that the plaintiffs’ marks became famous before the filing of the applications of the defendants, and (3) that an association exists between the parties’ marks that would impair the distinctiveness of the plaintiffs’ famous marks.⁷⁵ Mattel has subsequently appealed the TTAB’s decision concerning MOTOWN in district court, and that case is set for trial in 2013.⁷⁶

In the Coach Services v. Triumph opposition, the TTAB found, and the Federal Circuit affirmed, that the evidence of record did not prove that the COACH mark was famous for purposes of dilution, and, as a result, Coach Service’s opposition based on dilution was dismissed.⁷⁷

In Rolex Watch U.S.A., the TTAB found that the degree of dissimilarity between the ROLEX and ROLL-X marks, the conflicting survey results concerning association, and the lack of intent of the defendant to create an association with Rolex outweighed the recognition, distinctiveness, and substantially exclusive use of the plaintiff’s ROLEX mark.⁷⁸ The TTAB also found that Rolex Watch had not introduced evidence of the degree to which its marketing power would potentially be diminished by the defendant’s intended use of the ROLL-X mark.⁷⁹ The opposition was therefore dismissed.⁸⁰ The Rolex Watch decision illustrates that proving fame of a mark is not enough to prevail in a dilution claim. A plaintiff must prove a likelihood of blurring in the minds of consumers and not just a loss of uniqueness in the marketplace.⁸¹

Concluding Points

As these cases illustrate, successfully proving a likelihood of dilution is a significant undertaking. To prove the requisite level of fame, a successful plaintiff will need substantial and extensive supporting evidence proving fame existed before the defendant applied for its mark. Parties lacking substantial evidence should be warned.

Examples of valuable evidence include: significant U.S. annual sales and advertising expenditures covering a substantial period of time; nationwide advertising campaigns and efforts via a variety of media targeting the general public; prior, nonlitigation brand awareness studies showing unaided awareness of the brand by consumers that include survey methodologies used and underlying data; extensive third-party media coverage of and attention dedicated to the brand; and copies of third-party articles and studies ranking well-known brands that list the brand owner’s mark. Brand owners and their counsel should create an archive or database to store this evidence. Maintaining and updating these evidentiary records should afford the owners and protectors of famous brands some degree of confidence, knowing that they can rely on this arsenal of evidence in future enforcement efforts.

Endnotes

1. 15 U.S.C. § 1125(c)(2)(B).

2. Id. § 1125(c)(2)(C).

3. Trademark Amendments Act of 1999, Pub. L. No. 106-43, 113 Stat. 219.

4. Trademark Dilution Revision Act of 2006, Pub. L. No. 109-312, § 2, 120 Stat. 1730, 1732.

5. 15 U.S.C. § 1125(c)(1).

6. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1372 (Fed. Cir. 2012).

7. 15 U.S.C. § 1125(c)(2)(A).

8. Coach Servs., 668 F.3d at 1372.

9. 15 U.S.C. § 1125(c)(2)(A).

10. Coach Servs., 668 F.3d at 1372–73; Toro Co. v. ToroHead Inc., 61 U.S.P.Q.2d 1164, 1170 (T.T.A.B. 2001).

11. Coach Servs., 668 F.3d at 1373 (citing Toro, 61 U.S.P.Q.2d at 1174); Coach Servs., Inc. v. Triumph Learning LLC, 96 U.S.P.Q.2d 1600, 1612 (T.T.A.B. 2010).

12. NASDAQ Stock Mkt. Inc. v. Antartica S.r.l., 69 U.S.P.Q.2d 1718, 1737 (T.T.A.B. 2003); Nat’l Pork Bd. v. Supreme Lobster & Seafood Co., 96 U.S.P.Q.2d 1479, 1496 (T.T.A.B. 2010); Nike Inc. v. Maher, 100 U.S.P.Q.2d 1018, 1024–27 (T.T.A.B. 2011); UMG Recordings, Inc. v. Mattel Inc., 100 U.S.P.Q.2d 1868, 1887 (T.T.A.B. 2011); Rolex Watch U.S.A., Inc. v. AFP Imaging Corp., 101 U.S.P.Q.2d 1188, 1191–93 (T.T.A.B. 2011); Research in Motion Ltd. v. Defining Presence Mktg. Grp. Inc., 102 U.S.P.Q.2d 1187, 1197 (T.T.A.B. 2012).

13. Nat’l Pork Bd., 96 U.S.P.Q.2d at 1496. The TTAB did not consider likelihood of confusion grounds, given its determination concerning the likelihood of dilution. Id. at 1498.

14. Nike, 100 U.S.P.Q.2d at 1024–27. The TTAB also sustained on likelihood of confusion grounds. Id. at 1023.

15. Id. at 1024.

16. UMG Recordings, 100 U.S.P.Q.2d at 1871–72. The TTAB also sustained on likelihood of confusion grounds. Id. at 1886.

17. Research in Motion, 102 U.S.P.Q.2d at 1197. The TTAB also sustained likelihood of confusion grounds as to opposition nos. 91178668 and 91179490. Id. at 1198.

18. Coach Servs., 668 F.3d 1356.

19. Id. at 1725–26.

20. Id.

21. Id.

22. Id. at 1726–27.

23. Id. at 1724.

24. Nike, 100 U.S.P.Q.2d at 1030 (quoting Toro Co. v. ToroHead Inc., 61 U.S.P.Q.2d 1164 (T.T.A.B. 2001)).

25. 15 U.S.C. § 1125(c)(2)(B)(i)–(vi).

26. Nat’l Pork Bd., 96 U.S.P.Q.2d at 1497.

27. Nike, 100 U.S.P.Q.2d at 1030.

28. Id. at 1029–30.

29. UMG Recordings, 100 U.S.P.Q.2d at 1888; Rolex Watch, 101 U.S.P.Q.2d at 1194–95.

30. Nike, 100 U.S.P.Q.2d at 1022–23, 1030.

31. Id. at 1030.

32. Nat’l Pork Bd., 96 U.S.P.Q.2d at 1497.

33. Id.

34. Research in Motion, 102 U.S.P.Q.2d at 1197–98,

35. Id.

36. Coach Servs., 96 U.S.P.Q.2d at 1614; Coach Servs., 101 U.S.P.Q.2d at 1721–22.

37. Id.

38. Id.

39. Id.

40. Id.

41. Rolex Watch, 101 U.S.P.Q.2d at 1195.

42. Id.

43. Id.

44. Id.; Nat’l Pork Bd., 96 U.S.P.Q.2d at1497; Nike, 100 U.S.P.Q.2d at 1028; UMG Recordings, 100 U.S.P.Q.2d at 1889; Research in Motion, 102 U.S.P.Q.2d at 1198.

45. Nike, 100 U.S.P.Q.2d at 1028 (quoting NASDAQ Stock Market, Inc. v. Antarctica, S.r.l., 69 U.S.P.Q.2d 1718, 1735 (T.T.A.B. 2003)).

46. Coach Servs., 69 U.S.P.Q.2d at 1614.

47. Nat’l Pork Bd., 96 U.S.P.Q.2d at1497; Rolex Watch, 101 U.S.P.Q.2d at 1195; Research in Motion, 102 U.S.P.Q.2d at 1198.

48. Coach Servs., 69 U.S.P.Q.2d at 1614.

49. Id.

50. Nike, 100 U.S.P.Q.2d at 1028.

51. Id.

52. Id.

53. Id.

54. UMG Recordings, 100 U.S.P.Q.2d at 1889.

55. Id.

56. Nat’l Pork Bd., 96 U.S.P.Q.2d at 1497–98.

57. Id.

58. Id.

59. Nike, 100 U.S.P.Q.2d at 1028.

60. UMG Recordings, 100 U.S.P.Q.2d at 1889.

61. Rolex Watch, 101 U.S.P.Q.2d at 1195.

62. Research in Motion, 102 U.S.P.Q.2d at 1198–99.

63. Id.

64. Nat’l Pork Bd., 96 U.S.P.Q.2d at 1498.

65. Id.

66. Nike, 100 U.S.P.Q.2d at 1030.

67. Research in Motion, 102 U.S.P.Q.2d at 1199.

68. Id.

69. UMG Recordings, 100 U.S.P.Q.2d at 1889.

70. Coach Servs., 69 U.S.P.Q.2d at 1615.

71. Rolex Watch, 101 U.S.P.Q.2d at 1194.

72. Id. at 1196.

73. Id.

74. Nat’l Pork Bd., 96 U.S.P.Q.2d at 1498; Nike, 100 U.S.P.Q.2d at 1031–32; UMG Recordings, 100 U.S.P.Q.2d at 1890; Research in Motion, 102 U.S.P.Q.2d at 1200.

75. Id.

76. Mattel Inc. v. UMG Recordings, Inc., Case No. 2:11-cv-09813 (C.D. Cal. Nov. 28, 2011).

77. Coach Servs., 101 U.S.P.Q.2d at 1726.

78. Rolex Watch, 101 U.S.P.Q.2d at 1196–97.

79. Id.

80. Id. Rolex Watch appealed the decision to the Federal Circuit. The parties appear to have reached a settlement, however, because the defendant has subsequently withdrawn the ROLL-X application.

81. Barton Beebe, A Defense of the New Federal Trademark Antidilution Law, 16 Fordham Intell. Prop. Media & Ent. L.J. 1143, 1169–70 (2006).