Trademark Fame Lacking Admissible Evidence

"Misel Disel preshave liquid too similar to Diesel despite no trademark fame finding"

Plaintiffs arguing trademark fame for purposes of the likelihood of confusion analysis is about as common as defendants arguing the plaintiff’s trademark is conceptually weak. Plaintiffs want to establish trademark fame because strong marks are entitled to a broad scope of protection. For the record, trademark fame for likelihood of confusion purposes is different from fame for trademark dilution purposes.

More often than not, a trademark fame argument fails not because the evidence of fame does not exist, but because the plaintiff fails to properly admit the evidence to the Trademark Trial and Appeal Board. During the discovery period it is easy to get fixated on obtaining the evidence the party needs and not on the admissibility of the evidence being acquired. This was the problem Diesel S.p.A. encountered in its recent case before the Trademark Trial and Appeal Board.

Misel Disel, LLC filed an application seeking registration on the Principal Register of the mark MISEL DISEL (in standard characters) for “smooth shave enhancer, namely, pre-shave liquid.” The Trademark Office reviewed the application and found no conflicting marks that would bar registration under Trademark Act Section 2(d). The MISEL DISEL mark was published for opposition and Diesel S.p.A. opposed the registration of the mark.

Diesel was the owner of several prior registrations for DIESEL (in standard characters) and DIESEL formative marks, but the Trademark Trial and Appeal Board focused on one:  DIESEL (in standard characters) for, among other goods, “pre- and after shave creams and lotions.” The Board found that the MISEL DISEL and DIESEL marks were similar, the goods closely related, and there was no weakness based on the co-existence of third-party registrations. Misel only came up with three registrations for DIESEL and none were for goods remotely close to pre- and after shave creams and lotions.

Diesel argued that its DIESEL mark was famous for likelihood of confusion purposes. To support this argument, it relied on documents only. It offered no testimony, which was Disel’s fatal mistake.

Financial information is key to establishing trademark fame, but this information must be offered through testimony. It is not self-authenticating evidence. Web pages can be self-authenticating, but the Web pages are admissible of what they show on their face only, not to prove the truth of any matter asserted in the them.

Documents produced in response to a Document Request are also inadmissible unless other authenticated through a Request for Admission.

Because Diesel did not give any consideration to admissibility, it was left with minimal evidence on trademark fame and the Board was unable to find that the DIESEL was famous for likelihood of confusion purposes.

Gucci Satisfies the 7 Factors that Determine Famous Trademarks

"Man holding a GUCCI shopping bag one of the famous trademarks"

Famous trademarks are the pinnacle of brand recognition and a distinction more trademarks reach than you would expect. Famous trademarks come in two varieties:  famous trademarks for a dilution claim and famous trademarks for a likelihood of confusion claim. The absolute pinnacle of brand recognition is a famous mark for a dilution claim, but a brand needs to pass through famousness for a likelihood of confusion claim to get there, which in and of itself is a good place to be.

Trademark fame plays a dominant role in the process of balancing the likelihood of confusion factors because famous trademarks enjoy a wide latitude of legal protection. Famous trademarks cast a long shadow that competitors must avoid. Consumer surveys provide direct evidence of fame and the best evidence of fame, but consumer surveys are not commonly used primarily because they are expensive to obtain.

Accordingly, circumstantial evidence is primarily relied on to establish the trademark’s fame. The most common categories of circumstantial evidence used to establish trademark fame:

  1. Volume of sales;
  2. Amount of advertising expenditures; and
  3. The length of time that both sales volume and advertising expenditures have been high.

These factors are indicative of a famous mark because they provide a sense of popularity among consumers and the likelihood of consumers encountering the mark. But equally important to these three common categories of evidence are:

  1. The length of the use of the mark;
  2. The trademark owner’s market share;
  3. Trademark licensing activities; and
  4. The variety of goods bearing the mark.

These factors were on display recently in the Gucci America, Inc. v. UGP, LLC case involving the GUCCI brand. Uberto Gucci – the great-grandson to the original founder Guccio Gucci – filed a trademark application to register the mark UBERTO GUCCI & Design for “electronic cigarettes.” Gucci America, Inc. opposed the application alleging prior use and registration of the GUCCI mark for a variety of goods.

While most of the financial information was submitted under seal to maintain its confidentiality, but sales of GUCCI products in the U.S. were reported to be in the billions of dollars. Gucci America’s advertisements appeared in publications with a combined circulation exceeding 220 million, it has 4.9 million Twitter followers, 17.4 million Instagram followers, 16 million FaceBook followers, and received over 16.2 million FaceBook likes. These data points show how important social media is to not only creating brand awareness, but also in legal determinations involving the strength of a mark.

Millions of people visit the Gucci website, several books have been written about the brand, and it is consistently ranked as a top global brand. All of this circumstantial evidence lead the Trademark Trial and Appeal Board to find that the GUCCI mark is famous and that its rights extend to electronic cigarettes.