It is not easy to establish fame for purposes of showing a likelihood of dilution by blurring. Owner of the Empire State Building marks rose to the challenge in a recent decision by the Trademark Trial and Appeal Board (“the Board”). ESRT Empire State Building, LLC v. Michael Lang, Opposition No. 91204122 (June 17, 2015) [not precedential].
Others have tried and lost. See Coach Servs., Inc. v. Triumph Learning LLC, 101 U.S.P.Q. Omega SA v. Alpha Phi Omega, Opposition Nos. 91197504 and 91197505 (Mar. 31, 2016) (finding that Omega had failed to show fame prior to any established, continuous use of mark with the specific goods or services in the application or registration, but allowed Omega to amend its opposition to show this evidence if it could); Virgin Enterprises Limited v. Steven E. Moore, Opposition No. 91192733 (August 31, 2012) (telling Richard Branson that his VIRGIN mark was not famous because his company failed to provide sufficient evidence or a survey supporting fame).
Specifically, in the Empire State Building proceedings the applicant was seeking to register the mark below for various beers, ales, extracts for making beer, alcohol-free beers and other related goods.
Not surprisingly, the ESRT Empire State Building, L.L.C. (“ESRT”) opposed the application on the grounds of dilution of its famous registrations for the EMPIRE STATE BUILDING mark with respect to “entertainment services, namely providing observation decks in a skyscraper for purposes of sightseeing” (Reg. No. 2,411,972), and with respect to “real estate services, namely management and leasing of real estate” (Reg. No. 2,413,667). Further, ESRT owned the registration for the design mark below in connection with “entertainment services, namely providing observation decks in a skyscraper for purposes of sightseeing” (Reg. No. 2,429,297), and with respect to “real estate services, namely management and leasing of real estate” (Reg. No. 2,430,828).
In finding fame, the Board explained that testimony and evidence established that “[f]or 40 years, the Empire State Building was the tallest building in the world, and presently is the fifth tallest building in the United States.” As an aside, the taller other buildings include:
Focusing on pop culture, the Board noted that the “Empire State Building has been featured in hundreds of motion pictures and television shows, including King Kong, An Affair to Remember, and Sleepless and Seattle.” For all of you Gossip Girl fans, you may recall Blair failing to meet Chuck, with his flower bouquet, waiting for her on the top of the Empire State Building (unbeknownst to him Blair is delayed by her maid giving birth). I digress. The Board went on to list other evidence showing the Empire State Building’s fame. It also did not hurt that the applicant admitted (as he had to) that the Empire State Building is famous. Accordingly, the building owner’s opposition was sustained and the applicant could not register its mark for its beer, ale and other related items.
Last year, another New York trademark owner, the New York Yankees, was able to establish fame for its marks including THE HOUSE THAT RUTH BUILT® and Top Hat Design Marks (including the one depicted below). See New York Yankees P’ship v. IET Prods. & Servs., Inc., 114 U.S.P.Q.2d 1497 (T.T.A.B. 2015) [Precedential].
Not surprisingly, the applicant conceded that the Yankee’s marks were famous, but argued that they referred to the stadium that has been demolished not the goods associated with the marks. The Board did not buy this argument.
Marks associated with New York landmarks may have a better shot of achieving the fame needed to support a dilution claim. Do you think a design mark related to the One World Observatory Tower below would be able to achieve similar fame as a mark for dilution purposes in the future?