Trademark Tarnishment: Trademark Law’s Dirty Little Secret

Admittedly, there isn’t a lot going on with the whole tarnishment issue at the moment, but it’s so FUN and more often than not, the facts are so seedy, sordid, and just plain trashy that I can’t resist. So let’s get to it. Under the Federal Trademark Dilution Act (“FTDA”), 15 USC 15 §1125, trademark dilution is “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception.” Thus, federal dilution law protects the identifying or distinguishing power of a trademark.

Tarnishment is a flavor of dilution. A trademark is tarnished when an infringing mark portrays the infringed mark in a negative light- usually in the context of sex, drugs, crime, etc. It can also happen if the infringer is offering low quality goods. The thought is that a tarnishing use of a mark threatens to destroy the commercial value of the mark because people will associate the lack of quality of the infringer’s goods with the plaintiff’s unrelated goods, or because the infringer’s use reduces the trademark’s reputation as a wholesome identifier of the owner’s products or services.

Dilution by blurring slowly whittles away at a trademark’s distinctiveness whereas dilution by tarnishment is an attack on the reputation and positive image of a mark. Here’s the thing: dilution by tarnishment is an entirely separate analysis from your garden variety Likelihood of Confusion analysis. Did you catch that “presence or absence” verbiage in the statute? But before click up your heels and scream “Yahtzee!” you should know that it’s really hard to make a tarnishment argument stick so don’t get all antsy to trot this one out. The standard is all over the place because it’s typically analyzed under a state’s dilution laws (if there are any). And I hate to do that lawyer “well, it depends” thing, but in this case, a tarnishment cause of action really does depend on the jurisdiction.

Moseley v. V Secret Catalogue, Inc. is the main case. It’s more commonly known as the “Victor’s Little Secret” case. There are lots of other tarnishment cases, but this one has been going on FOREVER and it even got some USSC attention. Long story short- Victor’s Little Secret is an adult novelty shop. Victoria’s Secret lingerie company had no sense of humor about that name and sued for, among other things, tarnishment of their mark. The USSC took issue with the evidence presented and tossed it back to the Sixth Circuit. On remand, the Sixth Circuit upheld an injunction barring the defendant, Moseley, from using the mark “Victor’s Little Secret”. The court noted “There have been at least eight federal cases in six jurisdictions that conclude that a famous mark is tarnished when its mark is semantically associated with a new mark that is used to sell sex-related products. We find no exceptions in the case law that allow such a new mark associated with sex to stand.” They included a litany of cases to support this contention:

• Pfizer Inc. v. Sachs, 652 F. Supp. 2d 512, 525 (S.D.N.Y. 2009) (defendants’ display at an adult entertainment exhibition of two models riding a VIAGRA-branded missile and distributing condoms would likely harm the reputation of Pfizer’s trademark);
• Williams-Sonoma, Inc. v. Friendfinder, Inc., No. C 06-6572 JSW (MEJ), 2007 WL 4973848, at *7 (N.D. Cal., Dec. 6, 2007) (defendants’ use of POTTERY BARN mark on their sexually-oriented websites likely to tarnish “by associating those marks for children and teenager furnishings”);
• Kraft Foods Holdings, Inc. v. Helm, 205 F. Supp. 2d 942, 949-50 (N.D. Ill. 2002) (pornographic website’s use of “VelVeeda” tarnishes VELVEETA trademark);
• Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F. Supp. 2d 1339, 1355 (S.D. Fla. 2001) (defendants’ internet trade names likely to tarnish famous mark when websites “will be used for entertainment of a lascivious nature suitable only for adults”);
• Mattell, Inc. v. Internet Dimensions Inc., 55 U.S.P.Q.2d 1620, 1627 (S.D.N.Y. 2000) (linking BARBIE with pornography will adversely color the public’s impressions of BARBIE);
• Polo Ralph Lauren L.P. v. Schuman, 46 U.S.P.Q.2d 1046, 1048 (S.D Tex. 1998) (defendants’ use of “The Polo Club” or “Polo Executive Retreat” as an adult entertainment club tarnished POLO trademark);
• Pillsbury Co. v. Milky Way Prods., Inc., 215 U.S.P.Q. 124, 135 (N.D. Ga. 1981) (defendant’s sexually-oriented variation of the PILLSBURY DOUGHBOY tarnished plaintiff’s mark);
• Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 467 F. Supp. 366, 377 (S.D.N.Y. 1979) (pornographic depiction of a Dallas Cowboys Cheerleader-style cheerleader in an adult film tarnished the professional mark of the Dallas Cowboys).

OK! We get it! Sex equals tarnishment. Shame on you, tarnishers! I have to admit, though, I snickered when I read some of those holdings. But what happens if the alleged tarnishment doesn’t involve a person’s naughty bits? Remember I told you that it would depend on the jurisdiction? Let’s take a look at what other courts are doing with this issue:

• Smith v. Wal-Mart Stores, Inc., 537 F.Supp.2d 1302 (N.D. GA. 2008) (Tarnishment caused merely by an editorial or artistic parody which satirizes a product or its image is not actionable because of the free speech protections of the First Amendment);
• Harris Research, Inc., v. Lydon, 505 F.Supp.2d 1161 (N.D. UT. 2007)(No parody because the products and services were similar and in competition and tarnishment because it created a negative association);
• Louis Vuitton Malletier v. Haute Diggity Dog, LLC.,464 F.Supp.2d 495 (E.D. Va. 2006) (no tarnishment of high quality handbags when a person sold “Chewy Vuitton” squeaky dog toys);
• Perkins School for the Blind, v. Maxi-Aids, Inc., 274 F.Supp.2d 319 (E.D.N.Y, 2006) (Tarnishment is not limited to seamy conduct; replacing a warranty with an inferior warranty on results in an association with the inferior service provided by a supplier);
• Jordache Enterprises, Inc. v. Hogg Wyld, Ltd., 625 F.Supp. 48 (N.M. 1985)( Where the association is essentially a harmless, clean pun, which merely parodies or pokes fun at the plaintiff’s mark, tarnishment is not likely. A parody might be in poor taste, but it doesn’t rise to the level of unwholesome or unsavory).

¡Ay carumba! For those of you keeping score at home: Negative association, sex, inferior product or service equals tarnishment. Free Speech, parody, or dissimilar goods does not equal tarnishment. You can’t “stick it to the little guy” in Utah (Harris Research, Inc., v. Lydon), but you can compare someone to a Nazi in Georgia (Smith v. Wal-Mart Stores, Inc.) It’s OK to use a mark to call someone a lardass in New Mexico, (Jordache Enterprises, Inc. v. Hogg Wyld), but you better not put an infringing mark on lousy products in New York (Perkins School for the Blind, v. Maxi-Aids, Inc.) And if you use a mark in connection with adult entertainment anywhere, you’re toast. This probably goes for crime and drugs, too. Had enough?

At the end of the day, tarnishment is a fun analysis, but it doesn’t come up a lot because the facts are either very clearly tarnishing (like in the case of a sex-related use) and the cases settle, or it is a losing argument and a complete waste of time, so it isn’t alleged. Plus, tarnishment can be kind of a pain in the neck to prove.  Just think of the mountain of evidence you have to produce to prove the consuming public’s opinion of your mark is actually lowered. This might be why the International House of Pancakes complaint left it out and just stuck with the plain old dilution by blurring argument when it sued International House of Prayer. For a discussion of that case, read: IHOP v. IHOP: House of Pancakes Sues House of Prayer.

One could argue that permitting an infringing use by a religious group would tarnish a non-religious organization such as IHOP, perhaps arguing that the organization makes it a point to accept all cultures and faiths. But still, it will be really hard to prove a prayer service tarnishes much of anything. Dilution as a result of blurring? You bet. Tarnishment? Meh- not so much. Incidentally, I bet IHOP (both the prayer folks and the pancake restaurant) would be able to sue probably win a tarnishment case against a company using a tawdrier acronym of IHOP. At the end of the day, though, I still can’t help but wonder what IHOP (the pancake folks) would have done if the defendant was the Church of Satan? Now THAT would have been an interesting tarnishment argument!