The Heavy Burden of Proving Fame for Dilution Purposes

Most companies that have been using a federally registered trademark for ten years or more often mistakenly assume that the mark is famous. Long periods of use is a factor in the ultimate fame determination, but fame for dilution purposes is much different than fame for likelihood of confusion purposes. In fact, trademark owners would be better offer not using the word “fame” in the context of a likelihood of confusion. Recently, we saw this mistake play out in a case before the Trademark Trial and Appeal Board.

OTG Experience, LLC filed applications to register the mark PETER PIPER and PETER PIPER SMARTRUCK (in standard characters) for a variety of mobile food related services. OTG Experience’s applications were published for opposition and Peter Piper, Inc. opposed their registration relying on its prior registrations for PETER PIPER PIZZA (in standard characters with PIZZA disclaimed) in connection with “pizza” and “restaurant services.”

Peter Piper Pizza was founded in Arizona in 1973, and has used the PETER PIPER PIZZA mark for over 40 years. The company generates about $300 million in annual revenue across about 143 locations (although 43 are in Mexico) and spends about $20 million annually in advertising. While these numbers are significant, they were not enough to establish the fame of the PETER PIPER PIZZA mark.

The Trademark Trial and Appeal Board held that it is the burden of the party asserting fame to clearly prove it. In other words, fame needs to be proven by clear and convincing evidence. This standard requires the evidence presented must be highly and substantially more probable to be true than not and the trier of fact must have a firm belief or conviction in its factuality.

What this means for trademark owners is that offering numbers alone is highly unlikely to result in a fame finding. What a trademark owner needs to do is offer context for the raw statistics to demonstrate the general reputation the mark was with the public. Unfortunately, more often than not, trademark owners fail to provide the necessary context and the fame assertion fails because of it. That is what to Peter Piper Pizza.

Nevertheless, the raw statistics were enough for the Board to find that the PETER PIPER PIZZA mark was on overall strong mark entitled to a broad scope of protection. OTG Experience tried to counteract the strength evidence by relying on third-party use. Unfortunately, OTG Experience could only find three examples, well below the 10 minimum it appears is required to establish the weakness of a mark.

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