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Can’t Make It There, Can’t Make That Mark, Says TTAB

In Rare Dilution Decision, Board Finds in Favor of Empire State Building Mark
Scott J. Slavick
Inside Counsel
November 8, 2016

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Dilution means watering down. So should we accuse a brewer that dilutes a famous trademark of offering watery beer?

In an interesting and rare decision on trademark dilution, the Trademark Trial and Appeal Board (TTAB) sustained an opposition to the registration of a logo for beers featuring the brand name NYC Beer encircling an image of a building that resembles the Empire State Building. The Board concluded that the applied-for mark was likely to dilute the opposer's design mark depicting the Empire State Building.

The non-precedential ruling came in ESRT Empire State Building L.L.C. v. Michael Liang, Opposition No. 91204122 (June 17, 2016), in which applicant Michael Liang, a New York City resident, admitted that the Empire State Building was famous—no small admission for dilution purposes.

Opposer Empire State Realty Trust (NYSE: ESTR) is a real estate investment trust that owns, manages, and operates office and retail properties in Manhattan and greater metropolitan New York—including the Empire State Building. ESRT relied on two registrations for its design mark: one for entertainment services, i.e., its observation decks for sightseeing purposes, and one for real estate management and leasing services. The registrations described the mark as consisting of "the shape of the exterior of a skyscraper with a pointed, spindled top."

Because Liang's registration was intent-to-use, ESRT had to prove that its relied-upon marks had become famous prior to the filing date of the opposed application.

The Board began its analysis by explaining that, in contrast to fame for likelihood of confusion purposes, dilution fame is not determined in the context of certain goods or services. Rather, the claimant asseverating trademark dilution must prove that when the general public encounters the mark in almost any context, the public associates the term, at least initially, with the mark's owner. That is, a famous mark is one that has become a "household name."

In evaluating the duration, extent, and geographic reach of advertising and publicity of the mark, the Board noted that ESRT had used it since the building's completion in 1931, and that its world-famous 102nd-[AB1] floor observation deck had been featured in several iconic movies, including King Kong and Sleepless in Seattle. It also noted that ESRT had spent "very significant" sums on advertising in connection with the mark, and frequently licensed it to third parties with full attribution.

As to the amount, volume, and geographic extent of sales of goods or services offered under the mark, the Board considered that the building's observation deck received millions of visitors each year, and that ESRT's revenues under its mark were also "very significant." With respect to the extent of actual recognition, the Board concluded that ESRT's marks receive extensive media exposure in print, on radio and television, and on the Internet. Finally, the Board noted that ESRT owns its two pleaded registrations for its design mark, issued on the Principal Register.

Based on these four factors, the Board found that ESRT's marks should be considered famous for dilution purposes. It then turned to the six non-exhaustive factors for assessing the likelihood of dilution by blurring.

In terms of the degree of similarity between the marks, Liang's own witness admitted that the building depicted in Liang's mark was the Empire State Building, and there was no evidence to indicate otherwise. The Board found nothing in the record to suggest that ESRT's marks lacked inherent distinctiveness. It also found that ESRT's use of its marks was substantially exclusive.

ESRT provided no direct evidence to support its assertion that its mark was widely recognized—for example, by providing consumer survey results. Instead, it relied on its activities in branding, co-sponsorship, and licensing of its design mark to support its fame claim. In addition, neither party put forth any evidence that Liang intended to create an association with ESRT's marks. Obviously, neither party could put forth any evidence of actual confusion because Liang had not yet started using his mark.

Nevertheless, the Board held in favor of ESRT with its conclusion that Liang's mark was likely to cause dilution by blurring ESRT's marks.

Might the Board have "blurred" the distinction between the marks and the building? If a dilution claimant "must show that when the general public encounters the mark in almost any context, it associates the mark, at least initially, with the mark's owner," it is not abundantly clear that ESRT met that standard. Clearly, almost everyone in modern society recognizes the Empire State Building, but a question remains as to whether they associate images of the Empire State Building—the very things that constitute the marks—with ESRT.

I doubt it. I would argue that people recognize the Empire State Building, not its connection to its owners and operators. The evidence of licensed merchandise in the shape of the building is helpful, but I am not convinced it means that the mark passes the dilution-by-blurring test. This is one of the problems with adopting a trademark in the shape of a building.

A survey on this issue would certainly have been interesting—possibly so interesting that ESRT made the correct tactical decision not to conduct one or to present its findings.

In addition, the Board's dilution analysis was based on the fame of the Empire State Building, but the trademark is supposed to be a depiction of the building, not the building itself. If the trademark were considered to be the building itself, then how could the actual building function as a trademark? On the other hand, if the trademark is the depiction of the building, then how is the fame of the building itself relevant?

Many observers may be left staring out in the distance after this decision, like tourists atop the Empire State Building viewing the waters of the Hudson and the East River. Perhaps we are lucky this decision was not precedential, even though dilution cases before the Board are rare. Anyone for a watery beer?

[AB1] [AB1]Scott: The decision states 103rd floor, but the tourist web site and other online sources say the observation deck is on 102.


Reprinted with permission from the November 8, 2016 edition of Inside Counsel© 2016 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited, contact 877-257-3382 or reprints@alm.com.

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