What it Takes to Be Famous

Transcription

1 What it Takes to Be Famous INTA Dilution Committee October 2004 Members of the Fame Subcommittee Ayala Deutsch, Chair Jennifer Adams Draffen Kristin Allen M. Christopher Bolen Karen Wetherell Davis Daphne Gronich Roberta Jacobs-Meadway Karen Marie Kitterman Kenneth Kwartler Michael Murphy Stacey Rabbino Sondra Schol Edward Schuth Kiersten Skog Notice: All information provided by the International Trademark Association in this document is provided to the public as a source of general information on trademark and related intellectual property issues. In legal matters, no publication whether in written or electronic form can take the place of professional advice given with full knowledge of the specific circumstances of each case and proficiency in the laws of the relevant country. While efforts have been made to ensure the accuracy of the information in this document, it should not be treated as the basis for formulating business decisions without professional advice. We emphasize that trademark and related intellectual property laws vary from country to country, and between jurisdictions within some countries. The information included in this document will not be relevant or accurate for all countries or states. The chair wishes to thank Daniel Glantz, a legal intern at the National Basketball Association, for his valuable assistance in editing this paper.

2 Table of Contents Page I. Introduction 1 II. Fame Factors 1 A. Discussion of the Fame Factors 2 1. Degree of Distinctiveness of the Mark 2 2. Duration and Extent of Use 4 3. Duration and Extent of Advertising and Publicity 6 4. Geographical Extent and Trading Area 7 5. Channels of Trade 7 6. Degree of Recognition and Survey Evidence 8 7. Nature and Extent of Use of Similar Marks 9 8. Whether the Mark is Registered Other Factors 11 B. Summary of the Fame Factors by Circuit First Circuit Second Circuit Third Circuit Fourth Circuit Fifth Circuit Sixth Circuit Seventh Circuit Eighth Circuit Ninth Circuit 14

3 10. Tenth Circuit Eleventh Circuit Federal Circuit 16 III. Fame Assumed, Uncontested or Found Without Analysis 16 IV. Niche Fame 17 A. Niche Fame in a Specialized Market Segment 18 B. Niche Fame Based on Geographical Scope 20 C. Circuits that Reject Niche Fame 20 D. General Criticisms and Limitations of Niche Fame 22 V. Fame in Cybersquatting Cases 23 A. Pre-ACPA Cases The Stretch to Determine Fame 23 B. Post-ACPA Cases 26 VI. Fame Before the Trademark Trial and Appeal Board 27 A. Junior Party s Use in Commerce 28 B. Junior Party Adopted the Mark After Senior Mark Became Famous 28 C. Fame and Distinctiveness of the Senior Mark 29 VII. Fame Under State Dilution Laws 33 VIII. Conclusion 34

4 I. INTRODUCTION A trademark owner must prove a number of elements to state a claim for dilution, the fame of its mark chief among them. Because only famous marks are entitled to protection under dilution law, the question of whether a mark is famous is a threshold issue that must be determined at the outset of the dilution analysis. Without fame, all other dilution elements are moot. There is no specific definition of what constitutes fame for purposes of dilution, although both the federal statute and numerous judicial decisions shed light on the inquiry. This paper addresses what is required for a mark to be found famous in the context of a claim for trademark dilution. Section II addresses the eight fame factors set forth in the federal dilution statute and summarizes application of those factors by the courts, including a break down by factor and circuit. Section III briefly discusses dilution cases in which courts have found fame without specifically analyzing any of the suggested fame factors. Section IV addresses the concept of niche fame and includes discussion of decisions applying that doctrine as well as criticisms of the doctrine by courts and commentators. Section V analyzes dilution claims raised in domain name dispute cases, both before and after enactment of the Anti-Cybersquatting Consumer Protection Act. Section VI analyzes the dilution fame concept as it relates to opposition proceedings before the United States Patent and Trademark Office, including summaries of relevant decisions by the Trademark Trial and Appeal Board. Section VII briefly addresses state dilution laws. II. FAME FACTORS The Federal Trademark Dilution Act ( FTDA ) sets forth eight factors that a court may consider in order to determine whether a mark is famous: 1. The degree of inherent or acquired distinctiveness of the mark; 2. The duration and extent of use of the mark in connection with the goods or services with which the mark is used; 3. The duration and extent of advertising and publicity for the mark; 4. The geographical extent of the trading area in which the mark is used; 5. The channels of trade for the goods or services in relation to which the mark is used; 6. The degree of recognition of the mark in the trading areas and channels of trade of the mark s owner and the person against whom the injunction is sought, including the use of survey evidence; 7. The nature and extent of use of the same or similar marks by third parties; and 1

5 8. Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register. 1 A. Discussion of the Fame Factors Although courts occasionally will assume that a mark is famous, see infra at Section III.A, as a general rule courts will consider at least some of the eight factors identified in the FTDA in determining fame, even if the statute is not specifically cited. Courts generally agree that fame is something more than distinctiveness or secondary meaning. 2 Although application of the fame factors does not yield a consistent formula, some courts have noted that most trademark owners seeking protection under the FTDA should be able to satisfy each of the first six factors. 3 However, courts have not required that a plaintiff make a showing on each of the eight statutory factors in order to establish that its mark is famous. 1. Degree of Distinctiveness of the Mark As noted above, courts generally agree that a mark must be more than distinctive in a trademark sense 4 to be found famous under the FTDA. However, many courts have noted that a mark with a high degree of inherent distinctiveness weighs in favor of finding the mark famous. 5 For example, in Gideons Int l, Inc. v. Gideon 300 Ministries, 1. See 15 U.S.C. 1125(c). These factors are not exhaustive, and Congress is considering amendments to the FTDA that might include additional factors or clarification/revision of current factors. 2. See, e.g., Washington Speakers Bureau, Inc. v. Leading Auths., Inc., 46 F. Supp. 2d. 488 (E.D. Va. 1999), aff d without opinion, 217 F.3d 843 (4th Cir. 2000) (noting that courts should be selective and discriminating when construing a mark as famous); Michael Caruso & Co. v. Estafan Enters., Inc., 994 F. Supp (S.D. Fla.), aff d without dec., 166 F.3d 353 (11th Cir. 1998) (finding that a mark must be more than distinctive and must rise to the level of BUICK or KODAK to be famous); Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999) (holding that dilution is a cause of action reserved for a distinct class of marks with powerful consumer associations); I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27 (1st Cir. 1998) (holding that district court erred in finding mark was famous simply because it had acquired secondary meaning). 3. See Hershey Foods Corp. v. Mars, Inc., 998 F. Supp. 500 (M.D. Pa. 1998). The court ultimately determined that Hershey failed to establish fame in connection with an abbreviated version of its candy product trade dress, because: (1) several third parties in the food industry used a similar trade dress; and (2) Hershey had not registered the abbreviated trade dress, the seventh and eighth fame factors listed in the FTDA. Id. 4. See, e.g., Avery Dennison Corp., 189 F.3d at 876 ( [T]o be capable of being diluted, a mark must have a degree of distinctiveness and strength beyond that needed to serve as a trademark. ); Michael Caruso & Co. v. Estafan Enters, Inc., 994 F. Supp (S.D. Fla.), aff d without dec., 166 F.3d 353 (11th Cir. 1998). 5. See, e.g., Panavision Int l, L.P. v. Toeppen, 945 F. Supp (N.D. Cal. 1996), aff d, 141 F.3d 1316 (9th Cir. 1998) (noting that plaintiff s marks could not be found in the dictionary); Nike, Inc. v. Variety Wholesalers, Inc., 274 F. Supp. 2d 1352 (S.D. Ga. 2003) (considering inherent distinctiveness of NIKE); Gateway v. Companion Products, 68 U.S.P.Q.2d (BNA) 1407 (Dist. S.D. 2003) (noting that plaintiff s mark, which consisted of cow spots, was arbitrary); Visa Int'l Serv. Ass'n v. JSL Corp., 2002 U.S. Dist. LEXIS (D. Nev. Oct. 22, 2002); Victoria s Cyber Secret L.P. v. V Secret Catalogue, Inc., 161 F. 2

6 Inc., 6 the court determined that the plaintiff s GIDEONS mark commanded a high degree of distinctiveness, as evidenced by the fact that dictionaries defined the term GIDEONS by reference to the plaintiff. 7 Conversely, in Thane Int l v. Trek Bicycle Corp., 8 the court found that the plaintiff s TREK mark was suggestive of bicycles and, therefore not highly distinctive, and that this fact indicated, but did not compel, the conclusion that the mark was not famous. 9 Similarly, in Advantage Rent-A-Car, Inc. v. Enterprise Rent-A-Car Co., 10 the court cited the descriptiveness of the mark WE LL PICK YOU UP as contributing to its conclusion that the mark was not famous. 11 Some courts specifically have reserved protection under the FTDA for marks that are inherently distinctive. For example, in TCPIP Holding Co., Inc. v. Haar Communications Inc., 12 the plaintiff provided evidence of $280 million in sales from 228 stores in twenty-seven states, as well as evidence of tens of millions of dollars in advertising expenditures over the decade preceding the lawsuit. Citing the plaintiff s failure to include consumer surveys, press accounts, or substantiation for its claim that it had used the mark for thirty years, the Second Circuit determined that the plaintiff failed to make an adequate showing of fame. 13 The court further held that inherent distinctiveness is required for protection under the FTDA and, consequently, that marks that have acquired distinctiveness could not obtain such protection. 14 However, many courts have found a descriptive mark to be famous upon a showing that the mark had been used for many years, advertised, or promoted Supp.2d 1339 (S.D. Fla. 2001); Big Ten Conf. v. Big Ten Worldwide Concert & Sport, 2000 U.S. Dist. LEXIS (E.D. Mich. 2000) (finding Big Ten mark inherently distinctive) F. Supp.2d 566 (E.D. Pa. 1999). 7. Id. See also Binney & Smith v. Rose Art Indus., 60 U.S.P.Q.2d 2000 (E.D. Pa. 2001) (establishing fame of Crayola color scheme, citing virtually universal recognition, supported by survey evidence, placement in Smithsonian permanent collection, and appearance on commemorative U.S. postage stamp) F.3d 894 (9th Cir. 2002). 9. Id F.3d 378 (5th Cir. 2001). 11. Id F.3d 88 (2d Cir. 2001). 13. Id. 14. Id. This ruling was extended to colors, under the rationale that color marks cannot be inherently distinctive pursuant to the Supreme Court s Qualitex decision. See Deere & Co. v. MTD Holdings, Inc., 2003 U.S. Dist. LEXIS (S.D.N.Y. October 27, 2003) (plaintiff s mark consisting of colors yellow and green for lawn care products was not inherently distinctive, and thus ineligible for protection under the FTDA). 3

7 extensively, or that there had been significant revenue associated with the mark. According to these courts, when a mark is not inherently distinctive, the plaintiff will need to establish secondary meaning in the mark. Specifically, the plaintiff must demonstrate that its mark has been heavily advertised and promoted so that a large number of people have been exposed to the mark, and that there has been substantial revenue generated by sales of the goods or services associated with the mark, thereby establishing that the mark has reached a level of acquired distinctiveness that would support a finding of fame. 15 In Avery Dennison Corp. v. Sumpton, 16 the Ninth Circuit, in examining whether the surname marks at issue had become famous, specifically rejected the notion that a mark must be inherently distinctive to be famous, but noted that fame requires a greater showing than mere acquired distinctiveness. 17 Similarly, in I.P. Lund Trading ApS and Kroin Inc. v. Kohler Co., 18 the First Circuit found that the trade dress at issue was not distinctive, not registered, and not so well publicized and known that it had achieved the level of fame Congress intended. 19 There are some cases in which courts have concluded, without analysis, that a mark is well-known or very distinctive, in essence taking judicial notice of distinctiveness. 20 The courts in these cases typically have considered other factors, such as length of use or extent of advertising, before concluding that a mark is famous. However, there are also cases, discussed in more detail below, see infra at Section III.A, in which courts have concluded that a mark is famous without any analysis of additional factors. 2. Duration and Extent of Use The duration and extent of use of a mark contributes significantly to the fame analysis. As would be expected, the longer the plaintiff s use of the mark, the more likely it is to be held famous. In Ringling Bros., the lower court found that the plaintiff s 15. See, e.g., Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 955 F. Supp. 605 (E.D. Va. 1997), aff d, 170 F.3d 449 (4th Cir. 1999); Times Mirror Magazines, Inc. v. Las Vegas Sports News, L.L.C., 212 F.3d 157 (3d Cir. 2000) (finding niche market fame for THE SPORTING NEWS mark based in part on use in commerce since 1886 and evidence of millions of dollars in advertising expenditures). See also Binney & Smith v. Rose Art Indus., 60 U.S.P.Q.2d 2000 (E.D. Pa. 2001) (establishing fame of Crayola color scheme, citing over $200 million in advertising expenditures over five years, as well as advertising dating back forty years) F.3d 868 (9th Cir. 1999). 17. Id. at F.3d 27 (1st Cir. 1998). 19. Id. 20. See, e.g., America Online Inc, v. LCGM, Inc., 46 F. Supp.2d 444 (E.D. Va. 1998) (finding that plaintiff s AOL mark was recognizable throughout the world); Playboy Enters, Inc. v. Asiafocus Int l, Inc., No. Civ. A A 9 (E.D. Va. 1998) (finding that the marks PLAYBOY and PLAYMATE had developed significant goodwill and secondary meaning so that the fame of the marks could not reasonably be disputed). 4

8 use of THE GREATEST SHOW ON EARTH mark since the 1870s supported the contention that the mark was famous. 21 Similarly, in Avery Dennison, the court found that the marks at issue had been in use since the 1930s and the 1800s, respectively, and that such long-term use weighed in favor of finding fame. 22 Likewise, in Gideons Int l, 23 the court determined that use of the GIDEONS mark for more than one hundred years, combined with a geographic scope of use extending internationally and even into outer space via Apollo 8, favored a finding of fame. 24 In cases in which the length of the plaintiff s use of the mark is shorter, outcomes vary. In Gateway v. Companion Prods., 25 the court noted that the plaintiff had used and advertised its cow spot design mark for over ten years, finding the mark famous under the FTDA. 26 In Michael Caruso & Co. v. Estafan Enters., Inc., 27 the court determined that fifteen years of use was generally insufficient to conclude that the mark was famous. 28 However, in Victoria s Cyber Secret L.P. v. V Secret Catalogue, Inc., 29 the court found the plaintiff s mark famous based on nineteen years of use. 30 Additionally, courts have required consistent use of a mark in order to find fame. For example, in Columbia Pictures Indus., Inc. v. Screen Gems Film Co., Inc., 31 the plaintiff s evidence of use in connection with hundreds of television programs and motion pictures made for television, dating back to 1948, was undercut by the plaintiff s failure to produce new material in connection with its SCREEN GEMS mark until just before the action was filed. 32 The court ultimately determined that the plaintiff failed to establish sufficient evidence of fame to prevail on summary judgment, based in part on 21 See 955 F. Supp See also Times Mirror Magazines, Inc., 212 F.3d at 157 (3d Cir. 2000) (finding niche market fame for THE SPORTING NEWS based in part on use in commerce since 1886). 22. See 189 F.3d at F.Supp.2d 566 (E.D. Pa. 1999). 24. Id. See also Binney & Smith, 60 U.S.P.Q.2d 2000 (E.D. Pa. 2001) (establishing fame of Crayola color scheme, citing over fifty years of use) U.S.P.Q.2d (BNA) 1407 (Dist. S.D. 2003). 26. Id F. Supp. 1454, aff d without dec., 166 F.3d 353 (11th Cir.). 28. Id F. Supp. 2d 1339 (S.D. Fla. 2001). 30. Id U.S. Dist. LEXIS (S.D.N.Y. October 17, 2001). 32. Id. 5

9 the plaintiff s inconsistent use Duration and Extent of Advertising and Publicity Many courts have analyzed the duration and extent of advertising and publicity of a mark in determining its fame. Courts considering this factor often have cited significant amounts spent on advertising when concluding that a mark is famous. As noted above, courts also have looked to both the duration and the extent of advertising and publicity of a mark to determine whether the mark has acquired a high degree of distinctiveness. 34 The Seventh Circuit specifically has held that the duration of publicity and extent of publicity may be balanced, finding that massive publicity for the drug PROZAC, over a relatively short eleven-year period, was sufficient to establish fame. 35 However, a showing of substantial advertising, promotion and/or sales alone is generally not sufficient to establish that a mark is famous. 36 Extensive unsolicited publicity also can lend support to a finding of fame. For example, in Gideons Int l, Inc. v. Gideon 300 Ministries, Inc., 37 the court found that extensive unsolicited publicity surrounding the GIDEONS mark was particularly 33. Id. 34. See, e.g., Avery Dennison, 189 F.3d at 868 (the fact that plaintiff spent $5 million per year advertising and promoting the marks and sold $3 billion a year worth of trademarked products supported the conclusion that the surname marks had acquired a high degree of distinctiveness); Big Boy Rest. v. Cadillac Coffee Co., 238 F. Supp.2d 866 (E.D. Mich. 2002) (plaintiff s BIG BOY mark found to be famous in light of decades of extensive national and international advertising); Playboy Enters., Inc., v. Asiafocus Int l, Inc., No. Civ. A A (E.D. Va. 1998) (national and international advertising and promotion was extensive such that the PLAYBOY mark had acquired goodwill and secondary meaning); Ringling Bros., 955 F. Supp. at 610 (noting extensive advertising of the mark, including 6.5 billion reproductions or images of the mark in markets where the plaintiff s circus performed); Binney & Smith, 60 U.S.P.Q.2d 2000 (E.D. Pa. 2001) (establishing fame of Crayola color scheme, citing advertising dating back forty years, combined with over $200 million in advertising expenditures over preceding five years); Times Mirror Magazines, Inc., 212 F.3d at 157 (3d Cir. 2000) (finding niche market fame for THE SPORTING NEWS based in part on use in commerce since 1886 and evidence of millions of dollars in advertising expenditures); General Motors Corp. v. Autovation Techs., Inc., 317 F. Supp. 2d 756, 764 (E.D. Mich. 2004) (noting that the GM had established considerable goodwill in its trademarks by expending hundreds of millions of dollars and significant effort in advertising and promoting its marks). 35. See Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456 (7th Cir. 2000). 36. See, e.g., Washington Speakers Bureau, Inc. v. Leading Auths., Inc., 33 F. Supp.2d. 488 (E.D. Va. 1999), aff d without opinion, 217 F.3d. 843 (4th Cir. 2000) (noting that plaintiff spent considerable sums advertising and promoting its service, but finding that the mark was not famous); Corbitt Mfg. Co., Inc. v. GSO America, Inc., 197 F. Supp.2d 1368 (S.D. Ga. 2002) (holding that, aside from quoting sales figures, plaintiff had not provided evidence of the degree of recognition of the mark); Carnival Corp. v. SeaEscape Casino Cruises, Inc., 74 F. Supp.2d 1261 (S.D. Fla. 1999) (holding that extensive advertising and sales were not sufficient to establish fame of FUN SHIP mark); Alltel Corp. v. Actel Intergraded Communications, Inc., 42 F. Supp.2d 1265 (S.D. Ala. 1999) (holding that substantial advertising was not sufficient to establish fame of the mark) F. Supp. 2d 566 (E.D. Pa. 1999). 6

10 illustrative of fame given the plaintiff organization s strict policy against seeking publicity or advertising Geographical Extent and Trading Area Courts frequently have held that a mark used nationally, 39 worldwide, 40 and even universally 41 is famous. However, at least one court has noted that worldwide use is not relevant in determining fame under the FTDA. In Avery Dennison, the Ninth Circuit agreed that national use was relevant, but found that the plaintiff s worldwide sales were not supportive of fame Channels of Trade The fame factor assessing the channels of trade for goods or services has most commonly been examined in cases that discuss niche fame. For example, in Trek Bicycle, the Ninth Circuit held that mobile bicycles and elliptical orbit machines do not operate in the same narrow market segment for purposes of the niche fame concept, despite both sharing the general sporting goods market. 43 Similarly, in Sigma Chi Fraternity v. Sethscot Collection, 44 the court rejected the concept of niche market fame and held that, even if a mark is distinctive in a particular market, such market distinction does not render the mark inherently distinctive so as to establish immediate recognition of the particular product in the general public Id. 39. See, e.g., Ringling Bros., 955 F. Supp. at 605 (E.D. Va. 1997), aff d, 170 F.3d 449 (4th Cir. 1999) (finding acquired distinctiveness where over 70 million people each year were exposed to the mark in connection with plaintiff s circus); Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456 (7th Cir. 2000) (mark was used in nationwide marketing and sales, and had been prescribed more than 240 million times to 17 million patients, totaling more than $12 billion in sales in a broad trading area); Victoria s Cyber Secret L.P. v. V Secret Catalogue, Inc., 161 F. Supp.2d 1339 (S.D. Fla. 2001) (mark was used in 1300 stores and in connection with plaintiff s catalogue, which had a circulation of 350 million per year). Cf. Friesland Brands, B.V. v. Vietnam Nat l Milk Co., 228 F. Supp.2d 399 (S.D.N.Y. 2002) (review of product in one city newspaper hardly sufficient to establish fame). 40. See, e.g., Visa Int'l Serv. Ass'n v. JSL Corp., 2002 U.S. Dist. LEXIS (D. Nev. Oct. 22, 2002) (VISA mark used in each of the fifty states and around the world, including more than 300 countries and territories, and on the Internet); Binney & Smith v. Rose Art Indus., 60 U.S.P.Q.2d 2000 (E.D. Pa. 2001) (establishing fame of Crayola color scheme, citing worldwide use); Hotmail Corp. v. Van Money Pie Inc., 1998 U.S. Dist. LEXIS 10729; 47 U.S.P.Q.2d (BNA) 1020 (1998) (mark used in transmitting millions of e- mails worldwide on a daily basis). 41. See, e.g., Gideons Int l, Inc. v. Gideon 300 Ministries, Inc., 94 F. Supp.2d 566 (E.D. Pa. 1999) (use of the GIDEONS mark in hotels throughout the U.S., in 75,000 churches, and in outer space via Apollo 8 favored a finding of fame). 42. See 189 F.3d 868, 879 (9th Cir. 1999). 43. See Thane Int l v. Trek Bicycle Corp., 305 F.3d 894 (9th Cir. 2002) U.S. Dist. LEXIS 6332 (S.D. Fla. 2000). 7

11 In Visa Int'l Serv. Ass'n v. JSL Corp., 46 the court found that evidence of the plaintiff s use of the VISA mark in numerous channels of trade -- including twenty-one million merchant locations, and on the Internet, where more than $19.5 billion in transactions were performed using the VISA card in a twelve-month period -- all supported the conclusion that the mark was famous. 47 For a more detailed discussion of niche fame, see infra at Section IV. 6. Degree of Recognition and Survey Evidence Although there have not been many reported dilution decisions that discuss surveys, some courts have recognized that surveys can provide valuable evidence in assessing the fame of a mark. In Ringling Bros., the court found that the mark THE GREATEST SHOW ON EARTH was a famous mark under the FTDA. 48 In reaching this conclusion, the court considered a survey conducted by the plaintiff showing that over 40% of those surveyed could complete the phrase THE GREATEST ON EARTH with the word show and associated the completed phrase with the plaintiff. 49 In Ford Motor Co. v. Ford Fin. Solutions, 50 the court found that survey results not only established the fame and secondary meaning of the FORD mark, but also established that the defendant s use of the mark FORD FINANCIAL SOLUTIONS diluted the famous FORD mark because the results showed that consumers were likely to associate the defendant s services with the plaintiff. 51 Other courts have encouraged plaintiffs to use survey evidence in dilution cases, cautioning that, in the absence of such evidence, the court might not be able to conclude that the mark at issue has achieved the high degree of distinctiveness required to find fame Id U.S. Dist. LEXIS (D. Nev. Oct. 22, 2002). 47. Id. See also Binney & Smith v. Rose Art Indus., 60 U.S.P.Q.2d 2000 (E.D. Pa. 2001) (establishing fame of Crayola color scheme, used in a wide range of trade channels). 48. See 170 F.3d at 449. The court found, however, that the famous mark was not diluted because there was no evidence of actual harm to the selling power of the mark. Id. 49. Id F. Supp.2d 1126 (N.D. Iowa 2000). 51. Id. But see Gateway v. Companion Prods., 68 U.S.P.Q.2d (BNA) 1407 (Dist. S.D. 2003) (although a consumer survey showed fame and that a significant portion of the public associated defendant s product with plaintiff, survey evidence was not sufficient to establish actionable dilution because it did not establish an actual loss of selling power of the mark). 52. See, e.g., Thane Int l v. Trek Bicycle Corp., 305 F.3d 894 (9th Cir. 2002) (encouraging use of surveys to show recognition among the public); TCPIP Holding Co., Inc. v. Haar Communications Inc., 244 F.3d 88 (2d Cir. 2001) (absence of consumer surveys and press accounts, despite evidence of $280 million in sales from 228 stores operating in 27 states, and tens of millions of dollars in advertising expenditures, led 8

12 To support a finding of fame, a plaintiff must, at a minimum, establish that its mark is well-known in its own market. In Washington Speakers Bureau, Inc. v. Leading Auths., Inc., 53 the court, finding that the plaintiff s mark would not be known by those who were unfamiliar with the speaker s bureau market, and would not be famous among even the plaintiff s own inexperienced customers, determined, that the mark was not famous. 54 Courts also have allowed market studies or brand surveys to be used to establish the degree of recognition of a mark, although such studies may be of limited value depending on the groups that are surveyed. In Visa Int'l Serv. Ass'n, the court found that the VISA mark had a high level of recognition based on an NOP Research Group survey showing that 99% of U.S. consumers were aware of the VISA brand of payment cards. 55 Additionally, the plaintiff submitted a study entitled "The World's Greatest Brands" by Interbrand, which ranked VISA as the 14th top brand in the world and the 17th strongest brand on the Internet in a survey of consumers in the United States. 56 However, in Avery Dennison, the Ninth Circuit was not persuaded by the plaintiff s market studies, noting that the market research studies submitted did not evaluate fame of the marks beyond consumers of the plaintiff s products and similar goods. 57 In addition to surveys, evidence of cultural impact also can be a strong indicator of fame. For example, in Binney & Smith v. Rose Art Indus., 58 the court found that the high degree of recognition associated with the plaintiff s mark was evidenced, in part, by use of the mark on a commemorative postage stamp Nature and Extent of Use of Similar Marks Evidence of extensive third party use of similar marks generally will be considered strong evidence that a mark is not famous. 60 However, evidence of third party court to determine plaintiff failed to make an adequate showing of fame); I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27 (1st Cir. 1998) (encouraging use of surveys) F. Supp. 2d. 488 (E.D. Va. 1999). 54. Id. 55. See 2002 U.S. Dist. LEXIS 24779, at *23 (D. Nev. Oct. 22, 2002). 56. Id. 57. See 189 F.3d 868, 879 (9th Cir. 1999) U.S.P.Q.2d 2000 (E.D. Pa. 2001). 59. Id. 60. See, e.g., Playboy Enters., Inc. v. Netscape Communications Corp., No , (9th Cir. 2004) (granting summary judgment, holding that a genuine issue of material fact existed on the issue of fame where defendants introduced evidence of 40 third-party registrations for plaintiff s marks and hundreds of uses of the marks in company names and plaintiff rebutted this evidence); Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999) (the two marks were used commonly by third parties and such widespread use indicated that the marks were not famous for the goods or services of just one business); Michael Caruso & Co. v. Estafan Enters, Inc., 994 F. Supp (S.D. Fla.), aff d without dec., 9

13 use may not be persuasive if the third party use is minimal and the plaintiff has made a substantial showing on other fame factors. 61 For example, in Visa Int'l Serv. Ass'n, although the defendant submitted evidence of the mark being used by a tire company and a golf club manufacturer, the court found that there was no evidence that these third party brands were well-known, or even marginally well-known. 62 The court also agreed with the plaintiff that the survey evidence demonstrated that the VISA mark was a famous mark, notwithstanding the existence of any third-party use Whether the Mark is Registered Many courts have recognized that a plaintiff s trademark registration for its mark lends support to the argument that the mark is famous. 64 Indeed, even pending applications may be given evidentiary weight favoring fame. 65 In addition, courts often cite to the fact that a mark is not registered in declining to find the mark famous. 66 In fact, the failure to register a putatively famous mark can be dispositive of the fame 166 F.3d 353 (11th Cir. 1998) (holding that extensive third party use of the mark BONGO undermined plaintiff s claim that the mark was famous); Sigma Chi Fraternity v. Sethscot Collection, 2000 U.S. Dist. LEXIS 6332 (S.D. Fla. April 7, 2000) (holding that the fact that the terms Sigma and Chi were widely used by third parties in connection with similar services undermined plaintiff s argument that the mark SIGMA CHI was distinctive); Syndicate Sales, Inc. v. Hampshire Paper Corp., 2000 WL (S.D. Ind. 2000) (third-party use of features similar to plaintiff s claimed trade dress weighed against finding fame); Washington Speakers Bureau, Inc. v. Leading Auths., Inc., 33 F. Supp.2d. 488 (E.D.Va. 1999) (noting a number of third parties using similar marks). 61. See, e.g., Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456 (7th Cir. 2000) (noting no evidence of third-party use of entire mark); Binney & Smith v. Rose Art Indus., 60 U.S.P.Q.2d 2000 (E.D. Pa. 2001) (third party use of similar color schemes was neither widespread nor sufficiently lengthy to generate significant sales). 62. See 2002 U.S. Dist. LEXIS (D. Nev. Oct. 22, 2002). See also Gateway v. Companion Prods., 68 U.S.P.Q.2d (BNA) 1407 (Dist. S.D. 2003) (use by TuCows of a similar cow spot design did not defeat a finding that Gateway s cow spot mark was famous). 63. Id. 64. See, e.g., Times Mirror Magazines, Inc. v. Las Vegas Sports News, L.L.C., 212 F.3d 157 (3d Cir. 2000) (finding niche market fame for THE SPORTING NEWS based in part on registration obtained in 1886); Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999) (plaintiff s marks had been registered since 1963 and 1908); Graduate Mgmt. Admission Council v. RVR Narasimha RAJU, d/b/a Gmatplus.com, No. CIV.A A (E.D. Va. 2003) (several registrations); Cable News Network L.P. v. CNNEWS.COM, No A (E.D. Va. 2001) (several registrations); Binney & Smith v. Rose Art Indus., 60 U.S.P.Q.2d 2000 (E.D. Pa. 2001) (colors specifically claimed in federal registration); Ringling Bros.-Barnum & Bailey Combined Shows Inc. v. Utah Div. of Travel Dev., 955 F. Supp 605 (E.D. Va. 1997) (mark federally registered); America Online Inc. v. LCGM, Inc., 46 F. Supp.2d 444 (E.D. Va. 1998) (mark federally registered). 65. See, e.g., Deborah Heart and Lung Center v. Children of the World Found., Ltd., 99 F. Supp.2d 481 (D. N.J. 2000) (acknowledging pending application for federal registration). 66. See, e.g., Washington Speakers Bureau, Inc. v. Leading Auths., Inc., 33 F. Supp. 2d 488 (E.D. Va. 1999) (mark not federally registered); Gateway 2000, Inc. v. Gateway.com, Inc. & Alan B. Clegg, No. 5:96CV1021 (E.D.N.C. 1997) (no registration for precise mark at issue; relief denied). 10

14 inquiry Other Factors Some courts have considered the revenue generated by a mark in determining whether the mark is famous, incorporating this discussion into their analyses of the advertising and promotion of the mark. When courts have considered this factor in reaching the conclusion that a mark is famous, the sales or revenue figures of record typically have been substantial, often in the millions of dollars. 68 B. Summary of the Fame Factors by Circuit 1. First Circuit In I.P Lund Trading ApS, the court examined what constitutes a famous mark under the FTDA. In finding that the trade dress of the plaintiff s faucet design had not achieved the level of fame that Congress had intended, the First Circuit specifically noted that the product design was not registered, was not inherently distinctive, and was not particularly strong or well-publicized. The court also noted that the plaintiff had not presented any survey evidence to establish fame, and that there was no basis for the court to take judicial notice of the mark s fame Second Circuit Notably, the Second Circuit has specifically reserved protection under the FTDA for marks that are inherently distinctive. In TCPIP Holding Co., Inc. v. Haar Communications Inc., 70 the plaintiff provided evidence of $280 million in sales from 228 stores in twenty-seven states, as well as evidence of tens of million of dollars in advertising expenditures over a decade. Based in part on the plaintiff s failure to submit surveys or other substantiation for its claim that it had used the mark for thirty years, the court held that the plaintiff had failed to demonstrate that the mark was famous. 71 The court further held that inherent distinctiveness is required for protection under the FTDA, and that acquired distinctiveness was not sufficient to afford a mark protection under the 67. See Hershey Foods Corp. v. Mars, Inc., 998 F.Supp. 500 (M.D. Pa. 1998) (noting that [a] person would be expected to register a famous mark ). 68. See, e.g., Gateway v. Companion Prods., 68 U.S.P.Q.2d (BNA) 1407 (Dist. S.D. 2003) (11,500 boxes bearing the mark shipped daily); Victoria s Cyber Secret v. V Secret Catalogue, Inc., 161 F. Supp.2d 1339 (S.D. Fla. 2001) (annual product sales approaching $1 billion per year); Ringling Bros.-Barnum & Bailey Combined Shows Inc. v. Utah Div. of Travel Dev., 955 F. Supp 605 (E.D. Va. 1997) ($103 million derived per year from goods and services bearing the mark). 69. See 163 F.3d 27 (1st Cir. 1998). See also, Hasbro Inc. v. Clue Computing, Inc., 232 F.3d 1 (1st Cir. 2000) (holding that plaintiff s CLUE mark was not famous) F.3d 88 (2d Cir. 2001). See also Deere & Co. v. MTD Holdings, Inc., 2003 U.S. Dist. LEXIS (S.D.N.Y. October 27, 2003) (plaintiff s mark consisting of colors yellow and green for lawn care products was not inherently distinctive, and thus ineligible for protection under the FTDA). 71. Id. 11

15 statute Third Circuit Courts in the Third Circuit generally consider each of the eight factors set forth in the FTDA in determining fame. 73 The factors need not be applied strictly, however, nor must a prevailing plaintiff or a lower court address them each. 74 Additionally, niche market fame provides a basis for relief in dilution actions in the Third Circuit Fourth Circuit The Fourth Circuit generally has not required that a plaintiff make a showing on all of the fame factors set forth in the FTDA. In Ringling Bros., the court considered the majority of the statutory fame factors in determining whether THE GREATEST SHOW ON EARTH qualified as a famous mark, namely: (1) survey results; (2) evidence showing that over 70 million people a year were exposed to the mark; (3) evidence showing that the mark had achieved acquired distinctiveness; (4) the fact that the mark had been federally registered; (5) use of the mark since the 1870s; (6) extensive publicity and promotion of the mark, and; (7) $103 million in annual revenues generated in connection with the mark. 76 However, courts in the Fourth Circuit have considered as few as two or three statutory factors in reaching the conclusion that a mark is famous. For example, in Graduate Management Admission Counsel v. RVR Narashimah RAJU d/b/a Gmatplus.com, 77 the court found that the mark GMAT was famous based on evidence that the mark had been used since 1975, that the plaintiff had spent significant sums of money to advertise and promote the mark, and that the mark was the subject of a number of federal trademark registrations Id. 73. See, e.g., Pocono Int l. Raceway, Inc. v. Pocono Mountain Speedway, Inc., 171 F. Supp.2d 427 (M.D. Pa. 2001) (addressing factors used to determine fame). 74. See Times Mirror Magazines, Inc. v. Las Vegas Sporting News, L.L.C., 212 F.3d 157 (3d Cir. 2000) (acknowledging flexibility in application of fame factors). 75. See, e.g., Wawa, Inc. v. Haha, 1996 U.S. Dist. LEXIS 11494, at *5 (E.D. Pa. Aug. 8, 1996). 76. See 955 F. Supp. 605 (E.D. Va. 1997), aff d, 170 F.3d 449 (4th Cir. 1999). The court did not, however, require that the plaintiff submit evidence of the number of third parties using the mark before it found the mark to be famous. 77. No. Civ. A A (E.D. Va 2003). 78. Id. See also America Online Inc. v. LCGM, Inc. 46 F. Supp. 2d 444 (E.D. Va. 1998) (considering two factors, distinctiveness and federal registration, before concluding that the mark AOL was famous); Aztar Corp. v. MGM Casino, No A (E.D. Va. 2001) (holding that long use and extensive sales, advertising and promotion of the TROPICANA mark for casino services in the U.S. and abroad made the mark famous); Playboy Enters., Inc. v. Asiafocus Int l Inc., No. Civ. A A (E.D. Va. 1998) (holding 12

16 A showing of only one of the statutory factors, however, has not been sufficient to support a finding of fame in the Fourth Circuit. In Washington Speakers Bureau, Inc. v. Leading Auths., Inc., 79 the court declined to find that the plaintiff s mark was famous, noting that, although the plaintiff had demonstrated that it had spent considerable money to advertise and promote its service mark, the mark was not federally registered, would not be known by those outside the plaintiff s market, might not be well-known by some of the plaintiff s own inexperienced customers, and that many third parties were using similar marks for similar services Fifth Circuit There are few cases in the Fifth Circuit that have addressed the issue of what constitutes a famous mark under the FTDA. In each of the two Fifth Circuit decisions that have addressed the issue of dilution, the court declined to find that the plaintiff s mark had been diluted. In Westchester Media v. PRL USA Holdings, Inc., 81 the issue of fame was not contested by the defendant, but the court found that plaintiff could not establish an actual loss of selling power of its famous POLO mark. 82 However, in Advantage Rent-A-Car, Inc., the court found that the plaintiff s mark was descriptive and, therefore, not famous. 83 In a few cases, district courts in the Fifth Circuit have found a plaintiff s mark to be famous after the plaintiff had made a substantial showing on a number of the eight statutory fame factors Sixth Circuit The Sixth Circuit has noted that, distinctiveness in a mark is a characteristic quite different than fame. 85 The standard for fame required to succeed in a dilution claim is more rigorous than the distinctiveness standard required for infringement in this circuit. 86 Courts in the Sixth Circuit have looked to the FTDA factors when assessing that long use of the PLAYBOY and PLAYMATE marks and extensive advertising and promotion of the marks were such that the fame of those marks could not reasonably be disputed) F. Supp.2d 488 (E.D. Va. 1999). 80. Id F.3d at 658 (5th Cir. 2000). 82. Id. 83. See 238 F.3d. 378 (5th Cir. 2001). 84. See, e.g., Bayer Corp. v. Custom School Frames, LLC, 259 F. Supp.2d 503 (E.D. La. 2003); Sourtheastern Louisiana Entertainment v. Hollywood Entertainment Corp., 2000 U.S. Dist. LEXIS 1329 (E.D. La. 2000). 85. See V Secret Catalogue, Inc. v. Moseley, 259 F.3d 464, 469 (6th Cir. 2001). 86. See e.g., Libbey Glass, Inc. v. Oneida Ltd., 61 F. Supp.2d 700 (N.D. Ohio 1999) (denying summary judgment because genuine issue of fact existed as to distinctiveness and fame of plaintiff s glassware trade dress). 13

17 whether a mark is famous. 87 Applying these factors, these courts have found marks to be famous on the basis of both inherent distinctiveness 88 and acquired distinctiveness Seventh Circuit Courts in the Seventh Circuit typically have applied the FTDA s eight factor test to determine whether a mark is famous. While no mark in this circuit has achieved niche fame, courts in the Seventh Circuit do recognize niche market fame as a basis for recovery. See infra at Section IV. 8. Eighth Circuit There are only two decisions in the Eighth Circuit that address whether a mark is famous under the FTDA. In each of those cases, the plaintiff made a substantial showing on many of the statutory factors and put forth survey evidence, establishing that there was widespread consumer recognition of the mark Ninth Circuit Generally speaking, courts in the Ninth Circuit have applied the eight factor statutory test to determine if a mark is famous under the FTDA and have required a substantial showing on many of the factors before finding fame. 91 In the seminal case, 87. See, e.g., Big Boy Rests. v. Cadillac Coffee Co., 238 F. Supp.2d 866 (E.D. Mich. 2002); Big Ten Conf. v. Big Ten Worldwide Concert & Sport, 2000 U.S. Dist. LEXIS 2238 (E.D. Mich. 2000); American Express Corp. v. CFK, Inc., 947 F. Supp. 310 (E.D. Mich. 1996). 88. See, e.g., Big Ten Conf. v. Big Ten Worldwide Concert & Sport, 2000 U.S. Dist. LEXIS 2238 (E.D. Mich. 2000) (finding plaintiff s BIG TEN mark to be inherently distinctive and famous). 89. See, e.g., American Express Corp. v. CFK, Inc., 947 F. Supp. 310 (E.D. Mich. 1996) (holding that all eight FTDA factors weighed in favor of finding plaintiff s DON T LEAVE HOME WITHOUT IT marks to be famous). 90. See Gateway v. Companion Products, 68 U.S.P.Q.2d (BNA) 1407 (Dist. S.D. 2003); Ford Motor Co. v. Ford Fin. Solutions, 103 F. Supp (N.D. Iowa 2000). 91. See, e.g., Visa Int l Serv. Ass n v. JSL Corp., 2002 U.S. Dist. LEXIS (D. Nev. Oct ), rev d on other grounds, Visa Int l Serv. Ass n v. JSL Corp., 2003 U.S. App. LEXIS (9th Cir. Dec. 22, 2003) (finding that all eight factors, taken together, strongly supported the conclusion that the VISA mark was truly prominent and renowned and therefore, famous under the statute); Panavision Int l, L.P. v. Toeppen, 945 F. Supp (N.D. Ca. 1996), aff d, 141 F.3d 1316 (9th Cir. 1998) (finding the PANAVISION mark famous and citing federal registration, inherent distinctiveness, use since 1954, and advertising to general public and to the trade); Hotmail Corp. v. Van Money Pie Inc., 1998 U.S. Dist. LEXIS 10729; 47 U.S.P.Q.2d (BNA) 1020 (N.D. Ca. April 16, 1998) (holding that plaintiff presented sufficient evidence to establish that its HOTMAIL mark was famous after showing that the mark was distinctive, that plaintiff had spent $10 million in marketing and promoting the mark, and had used the mark since 1996 in connection with online services and in millions of s transmitted daily); Lozano Enters. v. La Opinion Publ g Co., 1997 U.S. Dist. LEXIS 20372; 44 U.S.P.Q.2d (BNA) 1764 (C.D. Ca. July 29, 1997) (finding that plaintiff s LA OPINION mark was famous based on 71 years of use, federal registration, circulation of 100,000, the largest circulation of Spanish language paper newspaper in the U.S., and noting that awards in the industry contributed to finding fame); Toys R Us v. Akkaoui, 1996 U.S. Dist. LEXIS 17090; 40 U.S.P.Q.2d (BNA) 1836 (C.D. Ca. Oct. 29, 1996) (finding that plaintiff had established that TOYS R US and KIDS R US marks were famous based on continuous use and national advertising since 1960 and 1983, respectively, had acquired strong degree of distinctiveness due to 14

18 Avery Dennison, the Ninth Circuit declined to find that the marks AVERY and DENNISON were famous. The court refused to find fame despite the plaintiff s showing that it had used the marks at issue since 1930s and 1800s, respectively, that the marks were federally registered, that the plaintiff had spent over $5 million per year advertising its products and had sold approximately $3 billion of trademarked products per year, and that the marks were not widely used by third parties. 92 Based on these facts, the court concluded that, although these surname marks had acquired distinctiveness through secondary meaning, the plaintiff had not proven that the marks were famous for dilution purposes Tenth Circuit There are no decisions in the Tenth Circuit discussing what constitutes a famous mark under the FTDA. 11. Eleventh Circuit A substantial showing on multiple FTDA factors generally has been held sufficient to establish fame in the Eleventh Circuit. In Victoria s Cyber Secret L.P. v. V Secret Catalogue, Inc., 94 the district court found that the mark VICTORIA S SECRET was famous based on the fact that the mark was arbitrary, had been used since 1982, was used in connection with 1300 stores and 350 million catalogues, and had annual sales approaching $3 billion. 95 However, extensive advertising or sales associated with a mark is generally not, by itself, sufficient to establish that the mark is famous. 96 Moreover, in the Eleventh Circuit, evidence of extensive third party use of the mark will generally defeat a claim by the plaintiff that its mark is famous. 97 promotional activity, and were the subject of federal trademark registrations and enforcement efforts that successfully prevented third parties from using same or similar marks) F.3d 898 (9th Cir. 1999). 93. Id F. Supp.2d 1339 (S.D. Fla. 2001). 95. Id. See also Nike, Inc. v. Variety Wholesalers, Inc., 274 F. Supp.2d 1352 (S.D. Ga. 2003) (holding that Nike s marks were inherently distinctive and federally registered, had been used for a long time, and were the subject of extensive advertising, and noting lack of third party use). 96. See, e.g., Alltel Corp. v. Actel Intergraded Communications, Inc., 42 F. Supp.2d 1265 (S.D. Ala. 1999) (holding that substantial advertising was not sufficient to establish fame of the ALLTEL mark). See also Corbitt Mfg. Co., Inc. v. GSO America, Inc., 197 F. Supp.2d 1368 (S.D. Ga. 2002) (holding that, aside from quoting sales figures, plaintiff had not provided evidence of the degree of recognition of the mark); Carnival Corp. v. SeaEscape Casino Cruises, Inc., 74 F. Supp.2d 1261 (S.D. Fla. 1999) (holding that, extensive advertising and sales were not sufficient to establish fame of FUN SHIP mark). 97. See, e.g., Michael Caruso & Co. v. Estafan Enters, Inc., 994 F. Supp (S.D. Fla.), aff d without dec., 166 F.3d 353 (11th Cir. 1998) (holding that extensive third party use of the mark BONGO undermined plaintiff s claim that the mark was famous); HBP, Inc. v. American Marine Holdings, Inc., 290 F. Supp.2d 1320 (M.D. Fla. 2003) (citing widespread use of the mark DAYTONA in holding that the mark was not famous); Corbitt Mfg. Co., Inc. v. GSO America, Inc., 197 F. Supp.2d 1368 (S.D. Ga. 2002) 15

19 12. Federal Circuit There are no decisions in the Federal Circuit discussing what constitutes a famous mark under the FTDA. III. FAME ASSUMED, UNCONTESTED OR FOUND WITHOUT ANALYSIS Occasionally, courts have found that a mark is famous without any analysis. These cases generally fall into three categories: (1) cases in which the court, in essence, takes judicial notice of the fame of the mark; (2) cases in which the defendant does not contest the fame of the mark; and (3) cases in which the court assumes fame for the purposes of a motion. When courts have taken judicial notice that a mark is famous, it often has been because the mark is a household name. 98 For example, in Caterpillar Inc. v. Walt Disney Co., 99 although ultimately denying the plaintiff s claim, the court stated [t]here is no question in this case that the Caterpillar marks are famous. 100 In other instances, courts have found marks to be famous because the defendant did not contest fame. 101 Finally, (citing widespread use of similar descriptions by competitors in holding that plaintiff s NO FLOAT mark was not famous); Sigma Chi Fraternity v. Sethscot Collection, 2000 U.S. Dist. LEXIS 6332 (S.D. Fla. April 7, 2000) (holding that the fact that the terms Sigma and Chi were widely used by third parties in connection with similar services undermined plaintiff s argument that the mark SIGMA CHI was distinctive); Carnival Corp. v. SeaEscape Casino Cruises, Inc., 74 F. Supp.2d 1261 (S.D. Fla. 1999) (holding that extensive third party use of the word fun in marks for similar services made it unlikely that the plaintiff s FUN SHIP mark would be considered famous). 98. See, e.g., Virtual Works, Inc. v. Network Solutions, Inc., 106 F. Supp.2d 845 (E.D. Va. 2000) (finding that defendant s VW mark was famous, but not specifying how it arrived at that conclusion) aff d on other grounds, Virtual Works Inc. v. Volkswagen of America, Inc., 238 F.3d 264 (4th Cir. 2001); Nabisco Inc. v. Pf Brands Inc., 191 F.3d 208 (2d Cir. 1999) (affirming injunction, noting that it was not disputed... that Pepperidge Farm s Goldfish constitutes a famous mark.... ); Sara Lee Corp. v. American Leather Prods., Inc., 1998 WL (N.D. Ill. 1998) (acknowledging factors, but determining that registered element of trade dress was famous without discussion) F. Supp.2d 913 (C.D. Ill. 2003) Id. However, in other cases, courts have found marks that are not obviously household names, such as ADVANTAGE, to be famous without analysis. See, e.g., Bayer Corp. v. Custom School Frames LLC, 259 F. Supp.2d 503 (E.D. La. 2003) (assuming plaintiff s ADVANTAGE mark to be famous); NBBJ East Ltd. P shp v. NBBJ Training Acad. Inc., 201 F. Supp.2d 800 (S.D. Ohio 2001) (finding that plaintiff s NBBJ mark was famous by and distinctive in the architectural, design and construction communities ); Portionpac Chem. Corp. v. Sanitech Sys., Inc., 210 F. Supp.2d 1302 (M.D. Fla. 2002) (finding that plaintiff s trade dress mark was famous without analysis, but holding that mark was not diluted because the trade dress was functional and not protectable ); Baylor Univ. v. International Star, Inc., 2001 U.S. Dist. LEXIS (W.D. Tex. 2001) (assuming plaintiff s mark was famous); Aztar Corp. v. MGM Casino and Tropicanacasino.com, No A. (E.D. Va. 2001) (TROPICANA for a casino found to be famous without discussion in granting default judgment) See, e.g., Kellogg Co v. Toucan Golf, Inc., 337 F.3d 616 (6th Cir. 2003) (issue of fame not in dispute and required no discussion); AutoZone, Inc. v. Tandy Corp., 373 F.3d 786 (6th Cir. 2004) (neither party 16