To prevail under the US anti-dilution law the trademark owner has to meet a tough standard to prove its mark's fame

Thane Int'l, Inc. vs. Trek Bicycle Corp.
US Court of Appeals of the Federal Circuit (2002)

In a recent case, the US Court of Appeals for the ninth Circuit has denied a dilution claim on the ground that federal anti-dilution laws are reserved only for relatively few trademarks and accordingly, a trademark owner seeking to prevail in a dilution action will have to meet a tough standard to prove its mark's fame.

The Case:

Thane International, Inc . sought to register ORBITREK for its elliptical exercise machines. Trek Bicycles Corp. opposed this registration based upon it's well-known TREK trademark for bicycles. Thane sought a declaratory judgement against Trek Bicycle that Thane's ORBITREK marks did not violate Trek's rights in the TREK trademark. Trek filed a counterclaim that the ORBITREK mark diluted Trek's allegedly famous trademark.

The District Court granted Thane's motion for summary judgment on the basis that no likelihood of confusion or dilution existed between the two marks, and denied Trek's motion for summary judgment on the same issues.

On appeal, the Ninth Circuit affirmed the district court's denial of Thane's motion for summary judgment on the issue of dilution on the following grounds:

• Trek was not entitled to a trial on its dilution cause of action. To prevail on a claim that a particular mark is diluted in a particular market segment, the trademark owner must be able to prove that its mark is famous in the very limited niche market in which its mark is sold and that the alleged diluter uses its mark in this same niche. If the trademark owner cannot meet this burden, it usually must be able to prove that its mark would be recognized by a very large percentage of the general public. Generally, a mark would have to be a house-hold name to have the potential for dilution outside its narrow niche market.
• Although, the mark TREK might be famous among bicycle enthusiasts, Trek did not establish fame in the niche market for stationary exercise machines, the market in which Thane operates. Similarly, Trek did not establish the level of fame among the general public necessary to support a claim for dilution.