Rosetta Stone Ltd. v. Google, Inc.
INTA Position: First, the district court misapplied the doctrine of functionality when it used that doctrine to consider whether a search engine is liable for trademark infringement when it uses trademarks to offer keyword advertising. Second, the district court erred 1) in holding that the defendant could not be liable for dilution because it did not use the plaintiff’s marks to identify its own services and 2) in holding essentially that the plaintiff was required to show actual dilution.
Outcome: Pending
Levi Strauss & Co. v. Abercrombie & Fitch Trading Co.
INTA Position: Under the U.S. Trademark Dilution Revision Act, the “degree of similarity” of two marks should be weighed along with the five other statutory blurring factors to determine whether there is a likelihood of dilution by blurring
Outcome: Pending
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc.
INTA Position: For a finding of likelihood of dilution, the U.S. Trademark Dilution Revision Act does not require that the marks be very or substantially similar and does not require that the defendant have a bad faith intent to associate its mark with the plaintiff's mark
Outcome: The U.S. Second Circuit appeals court agreed with INTA's position on both counts
Intel Corporation Inc. v. CPM United Kingdom Ltd.
INTA Position: Under the European Union's trademark dilution law, the analysis should not focus on whether there is a "link" between the well-known mark and the junior mark, but rather whether under all the circumstances there is a likelihood of unfair advantage because of use of the junior mark
Outcome: While the European Court of Justice did not reject the "link" analysis, it held—consistent with INTA's submission—that "existence of such a link must be assessed globally, taking into account all factors relevant to the circumstances of the case"
Louis Vuitton Malletier S.A. v. Haute Diggity Dog LLC
INTA Position: The U.S. district court erred by 1) permitting a parody defense to a claim under the U.S. Trademark Dilution Revision Act (TDRA) despite the fact that the defendant used the mark as a designation of source for its own goods and 2) failing to apply the six likelihood of dilution factors stated in the TDRA
Outcome: The Fourth Circuit appeals court accepted INTA’s positions that (1) the TDRA's parody defense does not apply because the defendant was using the trademark for its own products and (2) the district court had inadequately considered the six TDRA factors for assessing likelihood of dilution by blurring. However, instead of remanding the case so that the district court could further analyze the factors, the Fourth Circuit analyzed the factors itself and determined that there was no dilution by blurring
Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. Les Boutiques Cliquot Ltee
INTA Position: Under Canadian law, famous marks can be entitled to a broader scope of protection than lesser-known marks in the context of both likelihood of confusion and dilution. Also, depreciation of goodwill is a cause of action unique from likelihood of confusion
Outcome: The Supreme Court of Canada held that the fame of a mark is an important consideration in a likelihood of confusion analysis. Referring to INTA’s brief a number of times, the Court pointed out that the Association’s participation helped bring “to the fore” the seldom-discussed depreciation of goodwill cause of action under Trade-marks Act Section 22
Victor Moseley and Cathy Moseley d/b/a Victor's Little Secret v. V Secret Catalogue, Inc.
INTA Position: The U.S. Federal Trademark Dilution Act requires the owner of a famous trademark to show a likelihood of dilution to obtain an injunction
Outcome: The U.S. Supreme Court ruled that the Federal Trademark Dilution Act requires proof of actual dilution rather than mere likelihood of dilution. After an INTA-led campaign in response to this ruling, the Trademark Dilution Revision Act of 2006 was passed, which, among other things, established an express likelihood of dilution standard