Trademark Dilution: Part II
by Olivier A. Taillieu
* This article is Part II of a two part series.
Prior Use by Plaintiff
Timing is an important factor in the anti-dilution context. This is so because it would be unfair to hold someone liable for the use of a non-infringing, non-diluting mark while another mark gains fame in the marketplace. Hence, a plaintiff in an anti-dilution case must prove that its mark became famous prior to the constructive use date by any potential defendant of the challenged mark. To put it another way, the plaintiff must prove that the defendant first used its mark after the plaintiff’s mark became “famous and distinctive.” AM General Corp. v. DaimlerChrysler Corp., 311 F.3d 796 (7th Cir. 2002), related reference, 246 F. Supp. 2d 1030 (N.D. Ind. 2003); Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1013 (9th Cir. 2004), cert. denied, 125 S. Ct. 1825, 161 L. Ed. 2d 723 (U.S. 2005) (the first commercial use of the diluting mark is what “fixes the time by which famousness is to be measured.”) As one famous commentator explained, “this requires evidence and proof of the timing of two events: when the plaintiff’s mark achieved that elevated status called “fame” and when the defendant made its first use of its mark.” 4 McCarthy on Trademarks and Unfair Competition