• The Issues of Trademark Infringement and Dilution Go “Wild”
  • May 22, 2013 | Author: Susan Neuberger Weller
  • Law Firm: Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. - Washington Office
  • Those of us in a certain age bracket will remember Mutual of Omaha’s “Wild Kingdom” television program that first began in 1963. The Emmy Award-winning show’s first run ended in 1986, and the show went into production again in 2002 for broadcast on the Animal Planet network. The show is about wildlife, and focuses on a variety of subjects in that genre. The company recently filed suit against Couristan, Inc., a carpet and rug manufacturing company in business since 1926, alleging trademark infringement, unfair competition, deceptive trade practices, and trademark dilution for Couristan’s use of the mark WILD KINGDOM for a “safari-inspired residential carpet” collection showcasing three different animal patterns. Mutual of Omaha Insurance Co. v.  Couristan Inc., 8:13-cv-00123 (D. Neb. 2013 ). This may cause many people to ask the question, “What the heck does a carpet collection have to do with an animal wildlife television program, and why would anybody be confused about that?” A reasonable question which requires an informed answer.

    Trademark infringement is what most people think of when two marks are compared. Infringement occurs when the public is likely to be confused into believing that the goods and services provided by two different entities under two different marks come from the same source. The factors used to evaluate whether infringement exists include things such as the similarity of the marks, the similarity of the goods and services, the similarity of target customers, markets, and channels of trade, the fame of the respective marks, the length of concurrent use, instances of actual confusion between them, and the strength of the respective marks. Mutual of Omaha’s registered rights for the mark WILD KINGDOM cover television programs, calendars, bookmarks, maps, posters, pens, pencils, erasers, plush toys, clothing, and DVDs featuring television show episodes. In its Complaint, it claims to own unregistered rights for use of the mark on a variety of additional “collateral merchandise,” none of which includes carpets or rugs. In its trademark infringement claim, it alleges that “the public [is likely] to believe, contrary to fact, that the [Couristan] carpet collection emanates from and/or is sponsored or otherwise approved by Mutual of Omaha, and/or that Mutual of Omaha is somehow connected to or affiliated with the carpet collection.” Similar allegations are the basis for the unfair competition and deceptive trade practices claims. There are no allegations claiming instances of actual confusion or actual deception. Thus, it remains to be seen whether the judge or the jury demanded by Mutual of Omaha will find that the public is likely to be confused into believing that the WILD KINGDOM carpets come from Mutual of Omaha.

    The more interesting of the claims asserted is the state and federal dilution claim. For many years, it was not unusual for two similar or identical marks to coexist if they were used on goods or for services which were so distinctly different that no one would assume they came from the same source. When a federal claim for dilution came into existence in 1996, the landscape changed. Such a claim allows the owner of “a famous mark that is distinctive, inherently or through acquired distinctiveness” to enjoin another’s use of a similar or identical mark “that is likely to cause dilution by blurring or dilution by tarnishment.... regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.” “Dilution by blurring” is defined as an “association arising from the similarity between a mark or trade name and a famous mark that it impairs the distinctiveness of the famous mark” whereas “dilution by a tarnishment” is an “association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.” In support of its dilution claim, Mutual Omaha asserts that Couristan adopted the mark WILD KINGDOM because the Mutual of Omaha WILD KINGDOM  mark was famous, and that the distinctiveness of its mark will be impaired because the public may associate the mark with Couristan’s carpet collection instead of associating it “exclusively” with the goods and services provided by Mutual Omaha. In addition, because the carpets are made to look like animal skins, even though they are not made from actual animal skins, Mutual of Omaha claims that use of the mark in this manner will harm its reputation and its commitment to wildlife conservation.

    As of this writing, Couristan had not yet filed a response to the Complaint.

    The bulk of Mutual of Omaha’s case focuses on its “claim to fame,” namely, its allegedly famous WILD KINGDOM mark. So, how do you know if you risk liability for dilution of a “famous mark” when choosing a new mark for your goods and services? How do you know if a mark is “famous” if it is not an obviously famous mark that trips off the tongues of most people? Well, the Trademark Act states that a mark will be considered “famous” if it is “widely recognized by the general consuming public of the United States as a designation of source of the goods and services of the mark’s owner.” That definition alone leaves a lot of questions unanswered. To help determine whether a mark has reached this level, the Act lists some nonexclusive factors a court may consider in trying to reach this determination, which include the duration, extent, and geographic reach of advertising and publicity of the mark, the amount, volume, and geographic extent of sales of goods or services offered under the mark, the extent of actual recognition of the mark, and whether the mark was registered under various scenarios. Again, lots of issues to consider based upon facts that are not always obvious or clear or readily available to the public. So, what’s a business searching for a new trademark to do?

    The moral of the story here is to be creative and unique in choosing new corporate and trade names and new marks for your goods and services, and ALWAYS to do a full trademark search for any new mark or name prior to placing it into use. Try to avoid drawing the line too closely to other marks or names, particularly in your field or industry. My mantra to clients is always “why invite trouble” when you are starting from a clean slate with every new possibility available to you. Although the majority of marks in use worldwide would probably not rise to the level of “fame” required to assert a “dilution” claim successfully, the possibility of such a claim being asserted should not be discounted in many circumstances. The goal in branding is to create a singular, distinctive identity for your business that has the capacity to become an internationally famous mark. So, go “wild” but proceed with caution.