Tarnishment of Marks
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The unauthorized use of a party's rightfully held well known mark or a similar mark in association with goods or services different than or the same as those in the well known use(s), such that the original mark's ability to identify the rightful user as the source of goods or services or to carry associations of quality is impaired.
- Under the above definition, the impairment of the ability to make identifications of source is "blurring" and the impairment of the ability to carry associations of quality is "tarnishment".
- A finding that plaintiff's mark will suffer negative associations through defendant's use is generally required for a finding of tarnishment. (Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497 [2d Cir. 1996])
- Tarnishment most commonly arises when the plaintiff's trademark is linked to products of shoddy quality, diminishing the value of the plaintiff's mark because the public will associate the lack of quality with the plaintiff's unrelated goods. Deere & Co. v. MTD Prods, Inc., 41 F.3d 39, 43 (2d Cir. 1994)
- A number of cases have found a mark to be tarnished when its likeness is used in the context of sexual activity, obscenity, or illegal activity, however, tarnishment, by no means, is limited to seamy marketing conduct. (Henson)
Hasbro, Inc. v. Internet Entertainment Group, 1996 U.S. Dist. LEXIS 11626 (W.D.Wa. February 9, 1996)
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- This case represented an occurrence of the "tarnishment" form of dilution under the Federal Trademark Dilution Act.
- The district court issued a preliminary injunction against the defendant, Internet Entertainment Group, for the benefit of the plaintiff, Hasbro, based on its likelihood of success in showing tarnishment of its "Candy Land" trademark.
- Hasbro registered its Candy Land mark in 1951. It is used in relation to an internationally famous children's board game.
- The defendant used the domain name "candyland.com" as the locator for an adult entertainment site on the Internet.
- The court felt, without providing further discussion, that the use of such a domain name on a commercial Internet site was sufficient to find that dilution of a registered trademark under ｧ1125(c) had occurred.
- The defendant was allowed to post a non-linking referral message to its new site.
Back to Section 1125(c) of the Overview
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