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:
- Volume of sales;
- Amount of advertising expenditures; and
- 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:
- The length of the use of the mark;
- The trademark owner’s market share;
- Trademark licensing activities; and
- 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.