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First use but not the final word? The Alpha and Omega

TTAB interprets dilution-based claim question broadly in dispute over Omega mark.
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Andy Warhol may or may not have stated that everyone in the future will be famous for 15 minutes. No matter: The quote is widely attributed to him because it aligns with the brand of the artist who himself explored the concept of branding.

In its recent precedential decision in Omega SA v. Alpha Phi Omega, Opposition Nos. 91197504 and 91197505 (March 31, 2016), the Trademark Trial and Appeal Board (TTAB) addressed questions of fame—and its endurance—for two brands and their respective trademarks.

National service fraternity Alpha Phi Omega sought to register a crest mark for jewelry and the mark AΦΩ for headwear, jackets, shirts, sweatshirts. Opposer Omega SA asserted rights in its registered Omega marks for watches, clothing, and retail store services featuring watches and jewelry.

The Board granted Alpha Phi Omega's motion for summary judgment regarding its crest mark, on the ground that the involved marks were too dissimilar to support Omega SA’s likelihood of confusion claim.

However, the Board found that genuine disputes of material fact existed regarding the similarity of Alpha Phi Omega's AΦΩ mark and Omega SA’s various Omega marks, and of the parties’ respective goods. It denied Alpha Phi Omega's motion for summary judgment aimed at Omega SA’s likelihood of confusion claim regarding the AΦΩ mark.

The Board then turned to a more interesting question: When must an opposer’s mark have been used in order to support a trademark dilution claim in an opposition proceeding?

Omega SA contended that to prevail, it needed only establish that its pleaded Omega marks became famous prior to the filing date of Alpha Phi Omega’s applications, notwithstanding the fact they were filed as use-based applications that alleged dates of first use in commerce prior to the filing dates.

The Board found otherwise. It ruled that, when challenging a use-based application, the party claiming trademark dilution must prove fame prior to the defendant’s first use of its mark, and not merely prior to use in association with the specific goods or services set forth in a defendant's application or registration.

In support of its decision, the Board noted that earlier courts had agreed with this broader approach, including the U.S. Court of Appeals for the Federal Circuit in Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car, Inc., 330 F.3d 1333 (Fed. Cir. 2003).

The Board then turned to the merits of Alpha Phi Omega’s motion for summary judgment as it pertained to Omega SA’s claim of dilution by blurring—an association arising from the similarity between a mark and a famous mark that impairs the distinctiveness of the latter. It addressed the four factors of the Trademark Dilution Revision Act: To prevail on a dilution claim, a plaintiff must show that it owns a famous mark that is distinctive, that the defendant is using a mark in commerce that allegedly dilutes the plaintiff’s famous mark, that the defendant’s use of its mark began after the plaintiff’s mark became famous, and that the defendant’s use of its mark is likely to cause dilution by blurring or by tarnishment.

The Board found no genuine dispute of material fact that Alpha Phi Omega’s crest mark was strikingly dissimilar from Omega SA’s pleaded Omega marks. It noted that the crest mark was design-dominant, and that the word Omega was found only within the banner at the bottom of the crest mark. The Board found no evidence that a substantial percentage of consumers would focus on the "Omega" element alone and thereby associate the mark with Omega SA.

The Board also found no evidence that Alpha Phi Omega intended to create an association, and neither did it find evidence of the existence of an actual association, between its crest mark and Omega SA’s marks. The Board therefore concluded that Alpha Phi Omega’s crest mark would not hurt any assumed distinctiveness of Omega SA’s allegedly famous Omega marks. It granted Alpha Phi Omega’s motion for summary judgment with regard to Omega SA’s dilution claim as it pertained to Alpha Phi Omega’s crest mark.

However, the Board also found that genuine disputes of material fact existed as to whether Alpha Phi Omega’s AΦΩ mark created an association with Omega SA’s Omega marks, and as to when Alpha Phi Omega first used its AΦΩ mark in interstate commerce. It therefore denied Alpha Phi Omega’s motion for summary judgment with regard to Omega SA’s dilution claim as it pertained to Alpha Phi Omega’s AΦΩ mark.

Trademark attorneys would be wise to make a note of this case. Its broad definition of dilution-based use could have implications for future dilution-based oppositions. The parties will certainly allege to have earned more than 15 minutes of fame: Omega SA claims to have used at least one of its marks since 1894; Alpha Phi Omega was reportedly founded in 1925. The Board could have its hands full in determining fame and when it was established, even under its broader interpretation of dilution-based use. Time indeed is a crucial factor.


Reprinted with permission from the August 15, 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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