Niche Fame Not Enough for Dilution Claim to Survive Motion to Dismiss

Author: Brian R. Westley

A district court has discarded a Michigan company’s trademark dilution claim, emphasizing that niche fame is insufficient under the revised Trademark Dilution Act to survive a motion to dismiss.

Leapers, Inc., which is in the business of selling shooting, hunting, and outdoor gear, registered a trademark with the state of Michigan for the “scalloping design” of the adjustment knobs and bells of its rifle scopes. Leapers, Inc. v. SMTC, LLC, 14-cv-12290, 2014 WL 4964376 (E.D. Mich. Oct. 3, 2014). Leapers filed suit against defendants for false designation of origin, trade dress infringement, dilution, and various common law claims for allegedly advertising and selling products with Leapers’ mark without permission.

Defendants moved to dismiss the complaint for failure to state a claim. The court denied the motion except for Leapers’ dilution claim. The court explained that at most, Leapers might be able to establish that its design had niche fame within the firearms community. It was “implausible,” however, that Leapers could support its assertion that its design was widely recognized by the general consuming public.

“In evaluating fame, courts have deemed famous such well-known brands as Audi, Victoria’s Secret, Nissan, Nike, Rolex, and Pepsi,” the court stated. “All of these brands are instantly recognizable nationwide by the population in general. In contrast, ‘niche fame’ is insufficient to obtain protection against trademark dilution.”

The court explained that the language “general consuming public,” which was added to 15 U.S.C. § 1125(c)(2)(A) in 2006, eliminated the possibility that niche fame was adequate for finding a mark famous. The court noted that other examples of non-famous marks include the Texas Longhorns logo, the red-dripping wax seal of Maker’s Mark whisky bottles, and Quicken Loans.


DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.

Tagged ,

Leave a Reply

Fill in your details below or click an icon to log in: Logo

You are commenting using your account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s

%d bloggers like this: