Trademark infringement, trademark dilution, and the decline in sharing of famous brand names: an introduction and empirical study

Buffalo Law Review

Volumn 59, Issue 1, 2011, Pages 141-212

  Brauneis, Robert ^a   Heald, Paul ^b  

^a GEORGE WASHINGTON UNIVERSITY   (United States)

^b UNIVERSITY OF GEORGIA   (United States)

Author keywords

[No Author keywords available]

Indexed keywords

EID: 79953331059     PISSN: 00239356     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Review

References (317)

1. We do not intend the terms "share" and "sharing," as we use them in this Article, to imply that one user of a brand name has granted permission to another, or that there is any agreement between multiple users of a brand name about their concurrent use. We are aware that "share" sometimes connotes permission or agreement, or even altruistic motivation, which is why, for example, the use of the phrase "file sharing" to describe peer-to-peer Internet distribution has been so contentious. We have not, however, found a better term to refer to multiple concurrent uses of a single brand name, and students of trademark law will recognize that the phrase "concurrent use" would be confusing because it has gained a particular meaning in the Lanham Act in connection with concurrent registrations.
2. See 15 U.S.C. §§ 1052(d), 1067(a) (2006).
3. See, e.g., Gen. Motors Corp. v. Autovation Techs., Inc., 317 F. Supp. 2d 756, 761 (E.D. Mich. 2004).
4. See, e.g., Intermatic Inc. v. Toeppen, 947 F. Supp. 1227, 1233 (N.D. 111. 1996).
5. See infra text accompanying notes 14-15.
6. See infra text accompanying notes 20-26.
7. See infra text accompanying notes 27-28.
8. See, e.g., Rudolf Callmann, 3 The Law of Unfair Competition and TRADE-MARKS 1643 (2d ed. 1950)
9. ("Dilution is an infection, which, if allowed to spread, will inevitably destroy the ⋯ value of [a] mark.")
10. Shahar J. Dilbary, Famous Trademarks and the Rational Basis for Protecting "Irrational Beliefs," 14 GEO. MASON L. REV. 605, 605 (2007)
11. Joshua G. Jones, The "Inequities" of Dilution: How the Judiciary May Use Principles of Equity to Frustrate the Intent of the Federal Trademark Dilution Act, 91 J. PAT. TRADEMARK OFF. Soc'Y 200, 202 (2009)
12. ("The judicial response to this sudden infusion of dilution into state trademark jurisprudence was tepid at best.")
13. Tara D. Rose, The High Price of Fame Deserves a Discount: A Call for Uniform Dilution Law in North America for the Protection of Weil-Known Trademarks, 14 Sw. J.L. & TRADE IN AMS. 195, 197 (2007)
14. ("Protection from trademark dilution is an important international concern requiring uniform protection. Uniform protection will create an incentive for manufacturers to produce quality products, resulting in accurate reputations on which the public can depend.").
15. See, e.g., Laura R. Bradford, Emotion, Dilution, and the Trademark Consumer, 23 BERKELEY TECH. L.J. 1227, 1230 (2008)
16. ("[0]verly strict protection of mark familiarity through the law of trademark dilution can burden competitors who signal product quality and reliability ⋯ .")
17. Jesse A. Hofrichter, Tool of the Trademark: Brand Criticism and Free Speech Problems with the Trademark Dilution Revision Act of 2006, 28 CARDOZO L. Rev. 1923, 1926 (2007)
18. ("[Dilution law] may prove ineffective in application, and ⋯ will not adequately shield all protected speech from threats of litigation, resulting in a 'chilling effect' on speech.") (footnote omitted)
19. Julie Zando-Dennis, Not Playing Around: The Chilling Power of the Federal Trademark Dilution Act of 1995, 11 CAEDOZO WOMEN'S L.J. 599, 602 (2005) ("[T]he Supreme Court should declare the FTDA unconstitutional⋯. ").
20. See infra text accompanying footnotes 109-10.
21. See Robert Brauneis & Paul Heald, TRADEMARK INFRINGEMENT, Trademark Dilution, and the Decline in Sharing of Famous Brand Names: An Introduction and Empirical Study, The Database and the Spreadsheets, http://docs.law.gwu.edu/ facweb/rbrauneis/brandnamesharing.htm (last visited Nov. 18, 2010). Brauneis & Heald, supra note 10 (database table Brand Name Uses).
22. Id.
23. Id.
24. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 103 (1918)
25. Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 422 (1916)
26. (holding that the first user of mark does not gain priority in remote area).
27. See Act of Feb. 20, 1905, ch. 592, § 5, 33 Stat. 724, 725 (codified as amended at 15 U.S.C. § 85, repealed by Act of July 5, 1946, ch. 540, § 46(a), 60 Stat. 444)
28. (denying registration to marks that are identical or similar to registered or known marks "appropriated to merchandise of the same descriptive properties")
29. Consumers Petroleum Co. v. Consumers Co. of 111., 169 F.2d 153, 161 (7th Cir. 1948)
30. (applying the 1905 Act Rule). The doctrine that trademark protection does not extend to descriptive marks without secondary meaning also enabled widespread sharing, particularly as applied to personal names. As Judge Richard Posner has acknowledged, that application does not really fit the classic rationale for the doctrine. Instead, it stems from, among other things, the recognition that consumers will not mistakenly believe that a single source necessarily stands behind multiple uses of a personal name as a brand name, since they understand that many personal names are shared by many people.
31. See Peaceable Planet, Inc. v. Ty, Inc., 362 F.3d 986, 988-989 (7th Cir. 2004).
32. Just one of many constraints is that meaningful words are easier to remember than those that are not, and the stock of meaningful words is limited.
33. See Rabindra N. Kanungo, Brand Awareness: Effects of Fittingness, Meaningfulness, and Product Utility, 52 J. APPLIED PSYCHOL., 290, 294 (1968)
34. Kim Robertson, Strategically Desirable Brand Name Characteristics, 1 J. PROD. & Brand Mgmt. 62, 64-65 (1992).
35. The broader principle that good brand names are a scarce resource has been recognized on many occasions throughout the history of U.S. trademark law. For example, the elimination of the "token use" doctrine and the shortening of the registration renewal period in the Trademark Law Revision Act of 1988 were justified as measures to remove the amount of "deadwood" on the federal register, a "serious problem" because "[u]nused marks on the trademark register prevent others wishing to use those marks from doing so. " H.R. REP. No. 100-1028, at 11 (1988). For academic recognition of this principle
36. see Stephen L. Carter, The Trouble with Trademark, 99 YALE L.J. 759, 760 (1990): The traditional economic justification for trademark law rests on the premise that the set of available marks is virtually infinite and, in consequence, that the actual mark chosen by a firm to represent its goods is irrelevant. If that assumption turns out to be false-if even before the public comes to associate a mark with any particular goods or services, some marks are more desirable than others-then allowing protection of marks devoid of market significance may raise substantial barriers to entry by competitors.
37. Id.
38. Experiments have shown that in some contexts, a somewhat less common name such as "Felix" is easier to remember than a more common name such as "John.
39. " See Nicola Stanhope & Gillian Cohen, Retrieval of Proper Names: Testing the Models, 84 BRIT. J. PSYCHOL. 51, 64 (1993).
40. However, we believe it intuitively to be true that completely unfamiliar foreign names are more difficult to remember upon first exposure. Readers whose only native language is English can ask themselves whether they find it more difficult to remember the name of a new acquaintance when it is say, a Chinese name like Xiaoguang or Yangyue, a Hindu name like Anirudh or Sharmila, or a Thai name like Adirake or Malivalaya.
41. See New Kids on the Block v. News Am. Publ'g, Inc., 971 F.2d 302, 309-10 (9th Cir. 1992)
42. (determining that putting the "New Kids" mark under the complete control of the boy band would have deleterious economic consequences).
43. Trademark Act of 1946, Pub. L. No. 79-489, ch. 540, § 22, 60 Stat. 427, 435
44. (codified at 15 U.S.C. §§ 1051-1129 (2006)).
45. The Federal Trademark Law Revision Act of 1988 confirmed and strengthened the nationwide rights granted by federal registration, by providing explicitly that "filing of the application to register [a] mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods ⋯ specified in the registration," subject to a number of exceptions.
46. Trademark Law Revision Act of 1988, Pub.L. No. 100-667, 102 Stat. 3935, 3939 (codified at 15 U.S.C. § 1057(c) (2006)).
47. See, e.g., Action Temp. Servs., Inc. v. Labor Force, Inc., 870 F.2d 1563, 1566 (Fed. Cir. 1989)
48. Dawn Donut Co. v. Hart's Food Stores, Inc., 267 F.2d 358, 362 (2d Cir. 1959)
49. In re Beatrice Foods Co., 429 F.2d 466, 472 (C.C.P.A. 1970).
50. See, e.g., Burger King of Florida, Inc. v. Hoots, 403 F.2d 904 (7th Cir. 1968).
51. At least as soon as a senior registered user wants to expand into the geographic area of the junior user, it can obtain an injunction to force the junior user to cease use of the mark, a threat that would likely lead many junior users to change their brand names even before they were ordered to do so.
52. See Dawn Donut Co., 267 F.2d at 362. Moreover, more recent precedent has questioned whether the senior registered user need demonstrate use in the same geographical area before obtaining an injunction.
53. See Circuit City Stores, Inc. v. Carmax, Inc., 165 F.3d 1047 (6th Cir. 1999).
54. Act of Feb. 20, 1905, ch. 592, § 5, 33 Stat. 724, 726
55. (codified as amended at 15 U.S.C. § 85, repealed by Act of July 5, 1946, ch. 540, § 46(a), 60 Stat. 444 (2006)).
56. See Trademark Act of 1946 § 2(f).
57. See, e.g., Gerard N. Magliocca, One and Inseparable: Dilution and Infringement in Trademark Law, 85 Minn. L. REV. 949, 994-1007 (2001)
58. (arguing that the likelihood of confusion standard broadened substantially by the 1960s, rendering state dilution statutes redundant and obsolete)
59. Mark P. McKenna, The Normative Foundations of Trademark Law, 82 NOTRE DAME L. REV. 1839, 1913-14 (2007).
60. The Lanham Act expressly provides protection against confusion as to "association ⋯ sponsorship, or approval." 15 U.S.C. § 1125(a)(1)(A) (2006).
61. See, e.g., David F. Welkowitz, Trademark Dilution: Federal, State, and International Law 13-14 (2002).
62. See supra note 15.
63. Caroline Chicoine & Jennifer Visintine, The Role of State Trademark Dilution Statutes in Light of the Trademark Dilution Revision Act of 2006, 96 Trademark Rep. 1155,1155 (2006).
64. See Federal Trademark Dilution Act of 1995, Pub. L. No. 104-98, 109 Stat. 985
65. (codified as amended at 15 U.S.C. § 1051 (2006)).
66. 15 U.S.C. § 1125(c)(1).
67. Id. § 1125(c)(2)(A).
68. 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 24:106 (4th ed. 2010).
69. id. § 22:9
70. see david s. welkowitz, trademark dilution: federal, State, and International Law: 2009 Cumulative Supplement 7-9 (2009) ('Table 1-1. State-by-State Comparison of Dilution Statutes").
71. See MCCARTHY, supra note 33, § 22:9.25
72. see also WELKOWITZ, supra note 34, at 7-9.
73. See MCCARTHY, supra note 33, § 22:8
74. see also WELKOWITZ, supra note 34, at 7-9.
75. See WELKOWITZ, supra note 27, at 31-40
76. (discussing interpretation of statutes modeled on the 1964 Trademark Bill).
77. See, e.g., Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 216 (2d Cir. 1999)
78. (remarking that not all famous marks exhibit the distinctiveness required for dilution protection) (citing "American, National, Federal, Federated, First, United, Acme, Merit, [and] Ace" as examples).
79. See Federal Trademark Dilution Act of 1995, Pub. L. No. 104-98, §3(c)(l)(G), 109 Stat. 985, 985
80. (codified as amended at 15 U.S.C. §1125(c)(l)(G) (1996))
81. ("In determining whether a mark is distinctive and famous, a court may consider factors such as ⋯ the nature and extent of use of the same or similar marks by third parties.").
82. See Trademark Dilution Revision Act of 2006, Pub. L. No. 109-312, §2(c)(2)(B)(iii), 120 Stat. 1730, 1731 (2006)
83. (codified as amended at 15 U.S.C. §1125(c)(2)(B)(iii) (2006)) ("In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider ⋯ the extent to which the owner of the famous mark is engaged in substantially exclusive use of the mark.").
84. 615 F.2d 252 (5th Cir. 1980).
85. Id. at 254-55.
86. Id. at 259.
87. Id. at 265
88. see also RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 25, cmt. e (1995) ("[A] trademark is sufficiently distinctive to be diluted by a nonconfusing use [only] if the mark retains its source significance when encountered outside the context of the goods or services with which the mark is used by the trademark owner⋯ . Concurrent use by others makes it unlikely that consumers will form a single mental association between the mark and one specific user.").
89. Allied Maint. Corp. v. Allied Mech. Trades, Inc., 369 N.E.2d 1162, 1166 (N.Y. 1977).
90. For example, consumers may make associations between trademarks and certain types of products, such as an association between "Heineken" and "beer"; on one theory, dilution is the weakening of those associations.
91. See generally Maureen Morrin & Jacob Jacoby, Trademark Dilution: Empirical Measures for an Elusive Concept, 19 J. PUB. POL'Y & MKTG. 265 (2000)
92. Sara Stadler Nelson, The Wages of Ubiquity in Trademark Law, 88 IOWA L. Rev. 731 (2003). Or maybe consumers make associations between trademarks and certain desiderata, such as sportiness, luxury, or tradition, and dilution is the weakening of those associations.
93. See generally Shahar J. Dilbary, Famous Trademarks and the Rational Basis for Protecting "Irrational Beliefs," 14 Geo. MASON L. REV. 605 (2007). Or perhaps consumers become familiar and comfortable with whatever associations they make with particular marks, and dilution is the weakening of this comfort.
94. See generally Bradford, supra note 8. Although they differ, these theories all seek to reduce dilution to one particular type of phenomenon in the mind of the consumer, and contend that dilution occurs if and only if that phenomenon occurs, which is why we dub them "psychological theories."
95. Cf. Sunbeam Lighting Co. v. Sunbeam Corp., 183 F.2d 969, 972 (9th Cir. 1950) ("If, in [sic] course of our free enterprise, someone would market an unworthy article outside plaintiffs field bearing the name Sunbeam it must be borne as not an unlikely circumstance following plaintiffs selection of a non-fanciful word popular with commercial concerns.").
96. See Federal Trademark Dilution Act of 1995, Pub. L. No. 104-98, §3(a), 109 Stat. 985, 985 (codified as amended at 15 U.S.C. §1125(c)(l) (1996)).
97. See Times Mirror Mags., Inc. v. Las Vegas Sports News, LLC, 212 F.3d 157, 167 (3d Cir. 2000).
98. See Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 215-16 (2d Cir. 1999).
99. See TCPIP Holding Co. v. Haar Commc'ns, Inc., 244 F.3d 88, 104 (2d Cir. 2001).
100. See Trademark Dilution Revision Act of 2006, Pub. L. No. 109-312, § 2(c)(1), 120 Stat. 1730, 1730
101. (codified as amended at 15 U.S.C. §1125(c)(l) (2006))
102. ("[T]he owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against ⋯ use of [that] mark ⋯ in commerce that is likely to cause dilution.").
103. See id. § 2(c)(2)(B)(ii)
104. ("In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including ⋯ [t]he degree of inherent or acquired distinctiveness of the famous mark.").
105. As every trademark law student soon learns, each circuit has its own list of factors to consider in determining whether there is a likelihood of confusion between two marks, but they invariably include both third-party use and distinctiveness, sometimes considered together as the factor of the "strength" of the mark.
106. See, e.g., AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979) ("the strength of the mark")
107. Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961) ("the strength of [the] mark")
108. In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973) ("[t]he number and nature of similar marks in use on similar goods").
109. To be sure, in the trademark infringement context, courts often state that they consider third-party uses on similar goods and services much more relevant than such uses on dissimiliar goods and services.
110. See, e.g., Morningside Group Ltd. v. Morningside Capital Group, L.L.C., 182 F.3d 133, 139 (2d Cir. 1999)
111. ("Use of a like mark in a different market for different products or services need not undermine the mark's strength in its own market.")
112. Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877-878 (Fed. Cir. 1992). Some courts have even stated that third-party uses on dissimilar goods and services are completely irrelevant to the issue of infringement, such that evidence of these uses is properly excluded.
113. See Eclipse Assocs. Ltd. v. Data Gen. Corp., 894 F.2d 1114, 1119 (9th Cir. 1990) (holding that it was not error to exclude evidence of use of the plaintiffs mark "Eclipse" in fields unrelated to computers, such as floor cleaning products, commercial laundry folding equipment, and industrial process heating equipment).
114. The focus on uses on similar goods and services potentially distinguishes the inquiry into third-party uses in infringement cases from that in dilution cases. However, when the issue is how broadly a mark is protected against merely marginally similar uses, the number of third-party uses even on dissimilar goods should be relevant.
115. See 2 J. THOMAS MCCARTHY, MCCARTHY ON Trademarks and Unfair Competition § 11:88 (4th ed. 2010) ("[S]ome evidence of unrelated use is necessary where the alleged mark is in widespread use in many fields, such as ACME, NATIONAL or PREMIUM. That is, evidence of extensive third party use on a wide range of goods and services does tend to weaken strength and narrow the scope of protection.") (footnote omitted).
116. Empirical studies of trademark litigation include: Barton Beebe, The Continuing Debacle of U.S. Antidilution Law: Evidence from the First Year of Trademark Dilution Revision Act Case Law, 24 Santa Clara Computer & High TECH. L.J. 449 (2008)
117. Robert C Bird, The Impact of the Moseley Decision on Trademark Dilution Law, 26 J. PUB. Pol'y & MKTG. 102 (2007)
118. Justin J. Gunnell, Goldilocks and the Three Federal Dilution Standards: An Empirical Review, 17 TEX. INTELL. PROP. L.J. 101 (2008)
119. Clarisa Long, Dilution, 106 COLUM. L. Rev. 1029 (2006)
120. Kenneth L. Port, Trademark Extortion: The End of Trademark Law, 65 WASH. & LEE L. Rev. 585 (2008).
121. George Kingsley Zipf, A Note on Brand-Names and Related Economic Phenomena, 18 ECONOMETRICA 260 (1950).
122. Other significant studies on rates of use of brand names, though not on rates of brand-name sharing by multiple businesses, includes a series of articles by Monroe Friedman on the frequency of appearance of brand names in popular American novels, American and British hit plays, and American newspapers.
123. See generally Monroe Friedman, Brand-Name Use in News Columns of American Newspapers Since 1964, 63 JOURNALISM Q. 161 (1986)
124. Monroe Friedman, Commercial Influences in Popular Literature: An Empirical Study of Brand Name Usage in American and British Hit Plays in the Postwar Era, 4 EMPIRICAL STUD. Arts 63 (1986)
125. Monroe Friedman, The Changing Language of a Consumer Society: Brand Name Usage in Popular American Novels in the Postwar Era, 11 J. CONSUMER RES. 927 (1985).
126. See generally Zipf, supra note 57.
127. Id.
128. See generally George Kingsley Zipf, Human Behavior and the Principle of Least Effort (photo, reprint 1965) (1949).
129. See id.
130. See Zipf, supra note 57, at 261
131. 2. [log y = -0.4711 log x -1.890; ±0.1587]").
132. 15 U.S.C. § 1125(c)(2)(A) (2006).
133. George Burton Hotchkiss & Richard B. Franken, The Leadership of Advertised Brands: A Study of 100 Representative Commodities Showing the Names and Brands that are Most Familiar to the Public (1923).
134. Id. at 8-21.
135. The other leaders in multiple categories included "Colgate," which led in shaving soap and toothpaste; "Goodyear," which led in tires, raincoats, and rubbers; and "Heinz," which led in baked beans, jelly or jam, and spaghetti.
136. See generally Peter N. Golder, Historical Method in Marketing Research with New Evidence on Long-Term Market Share Stability, 37 J. MKTG. Res. 156 (2000).
137. Those brands, listed with the category they newly led in Golder and followed in parentheses by the category they led in Hotchkiss, include "Campbell's" in baked beans (soup); "Colgate" in toothbrushes (toothpaste); "Cross" in pens (leather goods); "Gillette" in shaving soap (razors); and "Hershey" in candies (chocolate).
138. In fact, the forty-one names we tracked from Golder include one further subtraction and one addition. On the one hand, we did not add the new leader in the category of hats in Golder (Logo Athletic). On the other hand, Golder subdivided the category of pens to include a new category of inexpensive pens, and we did add the leader in that new category, "Bic."
139. Those brands, listed with the category they newly led in Golder and followed in parentheses by the category they led in Hotchkiss, include "Colgate" in toothbrushes (toothpaste); "Cross" in pens (leather goods); and "Gillette" in shaving soap (razors).
140. The date of first use data was gathered from trademark registrations filed with the U.S. Patent and Trademark Office.
141. Although it is sometimes difficult to obtain accurate information about exactly when a particular use of a brand name commenced, it seems clear that some famous uses of brand names in our study commenced after the first year of our study, 1940, and of those, a few commenced after 1960, a year which we use heavily for comparisons with the last year in our study, 2010. One might well ask whether inclusion of such brand names in the study could lead to misleading results, depending on one's interpretive assumptions. For example, if one were looking at the rates of independent uses of these brand names as evidence of potential "free-riding" on the fame of the famous uses, it would distort aggregate totals to include independent uses from a year in which the famous use had not yet commenced. And if one were looking at rates of independent uses for evidence of legal change that allowed famous users to reduce independent uses, it would similarly distort aggregate totals to include independent uses from a year in which the famous use had not yet commenced (and hence a year in which the famous user could not have had any ability to take legal action to enforce its trademark rights). Yet exclusion of new market leaders identified in the Golder study could also be misleading, since declines in independent uses of brand names that no longer had a famous use might be misinterpreted as the result of greater legal protection, when in fact they had been replaced by independent uses of brand names that were new market leaders. In the face of all of these possibilities, we decided that we would include brand names that had more recently gained fame, but would note separately the changes in their use rates. It turns out that these brand names had little effect on aggregate totals.
142. See, e.g., infra note 115.
143. See generally Interbrand Group, World's Greatest Brands: An International Review by Interbrand (1992).
144. See generally 1 ENCYCLOPEDIA OF CONSUMER BRANDS (Janice Jorgensen ed., 1994).
145. Am. Benchmark Press, Icons of the American Marketplace: Consumer Brand Excellence (2007) (listing the most valuable and famous brands in the United States).
146. See H.R. Rep. No. 104-374, at 3 (1995), reprinted in 1996 U.S.C.CA.N. 1029, 1030 (offering Buick Aspirin, Dupont Shoes, and Kodak Pianos as examples).
147. See McCarthy, supra note 33, at § 24:105 ("For example, the most popular list of offending examples against which antidilution laws are directed is: Dupont shoes, Buick aspirin, Schlitz Varnish, Kodak pianos and Bulova gowns.").
148. In the Hotchkiss and Franken study, "Fatima" was the second most recognized brand for cigarettes, behind "Camel.
149. See HOTCHKISS & FRANKEN, supra note 64, at 145.
150. "Packard" was the third most recognized brand name for automobiles, behind "Ford" and "Cadillac.
151. " See id. at 128.
152. "Uneeda," taken by itself, was the single most recognized brand for crackers, although Hotchkiss and Franken aggregated it with other "Nabisco" brands and deemed "Nabisco" the most recognized brand.
153. See id. at 153.
154. See 15 U.S.C. § 1058(a) (2006).
155. See 15 U.S.C. § 1058(a) (1988).
156. We are aware that individuals and companies outside of the area covered by a telephone book have been able to purchase listings in that book. However, from observation we believe that to be a rare enough phenomenon not to significantly distort most results, and in any event we believe that the opportunity to purchase out-of-area listings has been constant, so that the results are not distorted by a change in policy.
157. Brauneis & Heald, supra note 10.
158. See, e.g., Dena Corp. v. Belvedere Int'l Inc., 950 F.2d 1555, 1561 (Fed. Cir. 1991)
159. U.S. Patent and Trademark Off., Trademark Manual of Examining PROCEDURE § 1213.05 (6th ed. May 2010) [hereinafter TMEP.
160. Each record also contains a number of fields intended to aid the research process, such as a field for noting later modifications of the record, and a field identifying the record's author.
161. It turned out also to be important to recognize that many of the companies that made the brand names in our study famous also built buildings in the cities we studied. Thus, there are or were "General Electric," "Postum," "Rolls-Royce," "Singer," and "Steinway" buildings in New York
162. "Palmolive," "Prudential," and "Wrigley" buildings in Chicago; and a "Packard" building in Philadelphia. We treated all uses made in connection with those buildings as authorized uses. More recently, a number of automobile companies have participated in the revival of the theater district in Chicago, and so the "Cadillac" Palace Theatre and the "Ford" Center for the Performing Arts are not independent uses, but are officially sponsored by the Cadillac Division of General Motors and the Ford Motor Company, respectively. On the other hand, the "Pontiac" Building in Chicago has never had any connection with the Pontiac Division of General Motors, and so the few uses connected with that building were treated as independent. Brauneis & Heald, supra note 10 (spreadsheet Author Ct + Cell Check).
163. Id.
164. (spreadsheet CountsTotalRankByCity rows 135-39).
165. Id.
166. (spreadsheet CountsTotalRankByCity).
167. See Zipf, supra note 57, at 263.
168. For example, "American," "United," "National," and "Acme" were not among the 131 brands studied.
169. Tina M. Lowrey et al., The Relation Between Brand-Name Linguistic Characteristics and Brand-Name Memory, 32 J. ADVER. 7, 7 (2003).
170. Linguists often use the term "generic word" as a synonym for "lexical word," but we have chosen to avoid the word "generic" in this context because of its prominence and different meaning in trademark law.
171. Brauneis & Heald, supra note 10 (spreadsheet Counts LexicalRankBy City).
172. We counted individual residential listings for all brand names in the 1960 and 2010 telephone books. We found sixty of the 131 brand names in the study as family names in those individual residential listings. The total number of residential listings featuring those family names in the 1960 books were 12,458. "Campbell," the most frequently found family name, accounted for 1905 listings or 15.29% of the total, and the top five names accounted for 60% of the total. "Diamond," with 435 listings, accounted for 3.5% of the total; "Royal," with fifty-two listings, accounted for 0.42% of the total; and "Eagle," with thirty-seven listings, accounted for 0.30% of the total. Id. (spreadsheet Surname People Totals Ranked).
173. "Baker" was the third-most-frequently found name among the sixty family names we found in the 1960 telephone books, with 1517 listings accounting for 12.18% of the total.
174. Id.
175. We checked the frequency of word uses in Mark Davies, Corpus of ContemporaryAmericanEnglish,AMERICANCORPUS.ORG http://AMERICANCORPUS.ORG, http://www.americancorpus.ORG (last visited Nov. 16, 2010). Of all of the twenty-five lexical word brand names, "skoal" occurs least frequently in the Corpus of Contemporary American English, appearing only forty-nine times. "Prophylactic" is the third least-frequent, at 275 uses, with "carnation," at 232 uses, in between. By contrast "royal," for example, occurs 13,113 times.
176. We checked to see whether there was any correlation, either negative or positive, between the rate of sharing of a lexical brand name and its frequency of use in English, as measured in the Corpus of Contemporary English. It turns out the relationship is almost so weak as to be random: a regression resulted in an R Square value of 0.0109 and a p-value of 0.6192.
177. Brauneis & Heald, supra note 10 (spreadsheet CountsLexicalRankByCity) .
178. Five other brand names in our study appear as (very rare) family names in the 2000 United States Census, although we did not find them in any of the telephone books we searched: Crisco, Mennen, Oneida, Sanka, and Zippo. Three brand names were in fact the family names of the company founders, but appear neither in the 2000 United States Census nor in the telephone books we consulted: Bacardi, Bulova, and Nestle. Although "O'Doul" sounds like an Irish name, it in fact does not exist in Ireland, and was apparently invented by the father of American baseball player Lefty O'Doul, who changed his name from Doul.
179. See Lefty O'Doul, EVERYTHING2 (Oct. 10, 2001, 4:32:08), http://everything2.com/title/Left+0%2527Doul(follow "Lefty O'Doul" hyperlink). As a result, there are exceedingly few people bearing the family name O'Doul, and it does not appear in the 2000 United States Census.
180. Other brand names were derived from the family name(s) of the founder(s) through clipping ("Baron Bich" became "Bic") amending (Charles William Post made "Postum") or abbreviation ("Bradley Voorhees & Day" became "B.V.D.").
181. See Marcel Bich, WlKIPEDiA, http://en.wikipedia.org/wiki/Marcel-Bich (last visited Dec. 11, 2010)
182. C. W.Post, WlKIPEDiA, http://en.wikipedia.org/wiki/Charles-William-Post (last visited Dec. 11, 2010)
183. BVD, WlKIPEDiA, http://en.wikipedia.org/wiki/BVD (last visited Dec. 11,2010).
184. A family name that is also a lexical word would, for example, be unlikely to qualify as "primarily merely a surname" under federal trademark law. 15 U.S.C. § 1052(e)(4) (2006).
185. See Brauneis & Heald, supra note 10
186. (spreadsheet Counts BrandNamesSurnames).
187. See Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 790 (5th Cir. 1983) (providing the four traditional categories of trademark distinctiveness).
188. Under the "doctrine of foreign equivalents" of U.S. trademark law, foreign terms should be translated into English and then treated as those English terms would be. TMEP
189. supra note 83, § 1207.0 l(b)(vi).
190. In the case of "Seiko," however, that seems unlikely to lead to a single definite meaning; according to Seiko's official company history, in Japanese, the word means "'exquisite,' 'minute,' or 'success."' John Goodall, A Journey in Time: The Remarkable Story of Seiko 9 (2003). Seiko, as a girl's name means "sincere child." Name: Seiko, NICKELODEON Parents Connect, http://babynamesworld.parentsconnect. com/meaning-of-Seiko.html (last visited Nov. 16, 2010)
191. See Brauneis & Heald, supra note 10 (spreadsheet Counts Deri vedByYear).
192. Id.
193. See id. (spreadsheet CountsTotalAlphaByCity). For the populations of Chicago and Philadelphia
194. see Campbell Gibson, Population of the 100 Largest Cities and Other Urban Places in the United States: 1790 to 1990 tbl.17 (U.S. Bureau of the Census Population Div., Working Paper No. 27, 1998), available at http://www.census. gov/population/www/documentation/twps0027/twps0027.html; for the population of Manhattan, which is New York County in the State of New York
195. see Richard L. Forstall, New York Population of Counties by Decennial Census: 1900 to 1990, U.S. CENSUS BUREAU (Mar. 27, 1995), http://www.census.gov/ population/www/censusdata/cencounts/files/nyl90090.txt.
196. State & County QuickFacts: New York County, New York, U.S. CENSUS BUREAU, http://quickfacts.census.gov/qfd/states/36/36061.html (last visited Nov. 16, 2010).
197. State & County QuickFacts: Chicago (city), Illinois, U.S. CENSUS BUREAU, http://quickfacts.census.gov/qfd/states/17/1714000.html (last visited Nov. 16, 2010).
198. State & County QuickFacts: Philadelphia (city), Pennsylvania, U.S. CENSUS BUREAU, http://quickfacts.census.gov/qfd/states/42/4260000.html (last visited Nov. 16, 2010).
199. See Brauneis & Heald, supra note 10 (spreadsheet Timechart).
200. See id.
201. The numbers for 1950 are averages of those for 1940 and 1960, rather than being based on empirical research; similarly, the numbers for 1970 are averages of the numbers for 1960 and 1980. They were inserted to maintain a uniform time scale across the figure.
202. See Brauneis & Heald, supra note 10 (spreadsheet CountsUnauthChange 1960-2010).
203. Id.
204. Id.
205. Id.
206. As far as we can tell, seven of the 131 brand names in the study had famous uses that commenced after 1960: "Aiwa," "Bic," "Breath-Savers," "Coach," "L'Eggs," "Nike," and "O'Douls." Of these, five had no independent uses in either 1960 or 2010. "Coach" had four independent uses in 1960, and six in 2010
207. "Nike" had zero independent uses in 1960, and one in 2010.
208. Id.
209. Thus, these brand names had very little effect on the aggregate totals. For further discussion of such brand names
210. see supra note 72.
211. See Brauneis & Heald, supra note 10 (spreadsheet BusinessTypes).
212. Many franchisors operate on a mixed basis, owning some of the locations that use the brand name, and licensing the brand name to owners of other locations. For a report on the top 200 franchisors and the percentage of locations to which each of them licenses the brand name through a franchise agreement
213. see 2008 Franchise Times: Top 200 Franchise Systems, FranchiseTimes.COM http://FranchiseTimes.COM(Oct. 2008)
214. http://www.franchisetimes.com/pdf/Franchise-Times-2008-Top-200.pdf.
215. Economic censuses have been conducted in the United States since 1810, but they have two limitations that impede their usefulness for this project.
216. First, before 1948, regular economic censuses were limited for the most part to manufacturing industries, and thus excluded economic activity in retail, wholesale, transportation, communication, and other service industries.
217. See William F. Micarelli, Evolution of the United States Economic Censuses: The Nineteenth and Twentieth Centuries, 15 Gov't INFO. Q. 335, 358 (1998).
218. In 1948, the Bureau of the Census conducted the first census of the retail and wholesale trades, and of selected service industries, but this census continued to exclude some service industries that are particularly important to large cities, including the finance, insurance, and real estate industries. Those industries were not added until 1992, when a large expansion of the scope of the economic census enabled it to cover industries accounting for 98% of the gross domestic product of the United States, expanded from about 75% of GDP in 1987. Id. at 372
219. see also Paul T. Zeisset, Disseminating Economic Census Data, 15 Gov't INFO. Q. 303, 314 (1998). Because the scope of the economic census excluded a substantial percentage of economic activity until 1992, it is difficult to use census data to make historical comparisons regarding businesses of all types before that year.
220. Second, the basic unit of the economic census is the "establishment, " defined as "a business or industrial unit at a single geographic location that produces or distributes goods or services-for example, a factory, store, or hotel." Shirin A. Ahmed et al., Conducting the Economic Census, 15 Gov't Info. Q. 275, 280 (1998).
221. The key here is the idea of a "unit at a single geographic location"; many establishments may be owned by the same company, or a company may only own a single establishment. The economic census does not provide information about company or firm ownership of establishments at the city level. Therefore, we cannot draw conclusions about ownership patterns from census information.
222. For independent use data, see Brauneis & Heald, supra note 10 (spreadsheet TimeChart)
223. for estimated total brand names in white pages telephone books
224. see id.
225. (workbook TelephoneBooksListingsCounts.xlsx).
226. See id.
227. (spreadsheet Surname Correl 3).
228. See id.
229. The figures for the Surname Brand Uses are from spreadsheet Surname Correl 3.
230. Id.
231. The figures for surname listings are summarized on spreadsheet Surname Correl 3, and are contained in the database Brand Names table.
232. Id.
233. The decrease in residential listings could represent a substantially larger drop in population if the national averages for change in household size and change in percentage of households that had wireline telephone numbers held for all three cities. Between 1960 and 2000, the national average household size decreased from 3.29 to 2.59, while the percentage of households with telephone service increased from 74% in 1960 to 95% in 2007. Douglas Galbi, U.S. Historical Telephone Statistics, All-Summary Spreadsheet, http://galbithink.org/ telcos/historical-telephone-stats.xls (last visited Nov. 16, 2010). On the other hand, by 2007, 14.7% of U.S. households had wireless-only telephone service.
234. Id.
235. (Wireless Spreadsheet). If, as is most likely the case, those wireless numbers are not listed in white pages telephone books, while the wireline numbers largely are, then the percentage of households with listed numbers has remained close to flat between 1960 and 2008. Thus, we would really only need to correct for household size. Applying such a correction, the percentage decrease in population of the sixty surnames in the study would be 39.79% rather than 23.52%. (We do not know whether there has been a change in the percentage of wireline numbers that are unlisted, and if so, how large that change is.)
236. By comparison, Manhattan's total population in 1990 was 4.08% lower than its population in 1960
237. Philadelphia's was 27.72% lower; and Chicago's was 19.64% lower.
238. See Campbell Gibson & Kay Jung, Historical Census Statistics on Population Totals by Race, 1790 to 1990, and by Hispanic Origin, 1970 to 1990, for Large Cities and Other Urban Places in the United States, U.S. CENSUS BUREAU,http://www.census.gov/population/www/documentation/twps0076/twps0076. html (last visited Nov. 16, 2010)
239. Population Estimates: Incorporated Places and Minor Civil Divisions, U.S. CENSUS BUREAU tbl.2, http://www.census.gov/popest/cities/SUB-EST2008.html (follow the second "Excel" (54k) hyperlink) Oast visited Dec. 11, 2010).
240. See the summary output of the regression on line 49 of spreadsheet Surname Correl 3.
241. Brauneis & Heald, supra note 10.
242. See id.
243. (spreadsheet Surname Correl T7 1960-2010).
244. See Genealogy Data: Frequently Occurring Surnames from Census 2000, U.S. CENSUS BUREAU, http://www.census.gov/genealogy/www/data/2000surnames/index.html (follow "File A: Top 1000 Names" link) (last visited Dec. 10, 2010).
245. For the regression results, see Brauneis & Heald, supra note 10 (spreadsheet Surname Correl T7 1960-2010 at 1. 38).
246. Because some of the surnames are also used as given names, we also looked at information about the historical incidence of baby names, gathered from social security records. For example, in a sample of 656,685 social security records between 1920 and 1929, there were no children named "Baker" or "Campbell," but there were forty-three boys named "Ford," fifty named "Carter," 310 named "Mack," 941 named "Douglas," and sixty-two named "Rogers."
247. See Douglas Galbi, Most Popular Given Names: US, 1801-1999, Galbi ThinkI.COM http://ThinkI.COM, http://www.galbithink.org/names/us200.htm (follow 1920-1929 Social Security samples "names" hyperlink in Popular Given Names US, Males) (last visited Dec. 11, 2010). We chose the decade 1920-1929 because we figured that business owners in 1960 would have been given their first names, on average, several decades earlier. However, this variable did not do well as an addition to the regression equation; it increased the R Square by less than two one-hundredths of one percent, and had a p-value of .7837.
248. See Brauneis & Heald, supra note 10 (spreadsheet Surname Correl T7 1960-2010 at 1. 38). In other words, it seems that very few people were naming businesses after their given names.
249. See, e.g., Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203 (1942).
250. The protection of trade-marks is the law's recognition of the psychological function of symbols. If it is true that we live by symbols, it is no less true that we purchase goods by them. A trade-mark is a merchandising short-cut which induces a purchaser to select what he wants, or what he has been led to believe he wants. The owner of a mark exploits this human propensity by making every effort to impregnate the atmosphere of the market with the drawing power of a congenial symbol. Whatever the means employed, the aim is the same-to convey through the mark, in the minds of potential customers, the desirability of the commodity upon which it appears. Once this is attained, the trade-mark owner has something of value. If another poaches upon the commercial magnetism of the symbol he has created, the owner can obtain legal redress.
251. Id. at 205.
252. The House report on proposed anti-dilution legislation states that the new cause of action would "recognize [ ] the substantial investment the owner has made in the mark and the commercial value and aura of the mark itself, protecting both from those who would appropriate the mark for their own gain." H.R. REP. No. 104-374 at 3 (1995), reprinted in 1996 U.S.C.C.A.N. 1029, 1030
253. see also Blake R. Bertagna, Poaching Profits: An Examination of The Ability of a Trademark Owner to Recover an Infringer's Profits Under the Lanham Act as Amended in 1999, 16 Tex. INTELL. PROP. L.J. 257, 292 (2008)
254. ("[I]t is 'famous marks' that are the ideal target for cybersquatters and 'free-riders' since 'famous marks ⋯ are more likely to be remembered and associated in the public mind' and are thus more attractive as targets for would-be copyists.") (alteration in original) (quoting Recot, Inc. v. Becton, 214 F.3d 1322, 1327 (Fed. Cir. 2000))
255. Anne Gilson LaLonde, Don't I Know You From Somewhere? Protection in the United States of Foreign Trademarks that are Well Known But Not Used There, 98 Trademark Rep. 1379, 1415 (2008)
256. ("Famous marks are particularly attractive to free riders ⋯ seeking to capitalize on the financial investment of the mark owner. Copying a famous mark, the Federal Circuit recognizes, gives free riders immediate recognition and substantially-reduced advertising costs.").
257. Cadillac sales plummeted in the last twenty-five years. As a percentage of the total US car market, Cadillac sales constituted only 1.2% in 2008.
258. See Ward's Auto. Grp., Ward's 2009 Automotive Yearbook 251 (71st ed. 2009). Percentage in prior years include: 2003 (1.3%), 1998 (2.2%), 1993 (2.4%), 1987 (3.7%), 1982 (4.3%), 1977 (4.0%), and 1972 (3.1%).
259. See Ward's Auto. Grp., Ward's Automotive Yearbook 242 (66th ed. 2004), 250 (61st ed. 1999), 204 (56th ed. 1994), 156 (50th ed. 1988), 70 (45th ed. 1983), 70 (45th ed. 1983), 71 (45th ed. 1983) (respectively).
260. See Brauneis and Heald, supra note 10 (spreadsheet Counts TotalAlphaByYear).
261. See ProQuest Historical Newspapers, PROQUEST,http://www.proquest.com/en- US/catalogs/databases/detail/pq-hist-news.shtml (last visited Nov. 17, 2010).
262. Because of the "substantial exclusivity factor, owners of marks like Baker, Campbell, Carter, Douglas, Royal, Metropolitan, Eagle, and Diamond have had little luck asserting rights under state or federal dilution statutes.
263. See MCCARTHY, supra note 33, § 24.67.
264. See Graeme W. Austin, Tolerating Confusion about Confusion: Trademark Policies and Fair Use, 50 Ariz. L. Rev. 157 (2008).
265. [A]ccurate assessment of the strength of the mark in any dispute would be difficult without some reference to consumers' impressions. Assessing the strength of a mark necessarily involves some kind of inquiry into how consumers respond to the messages about the trademark that its proprietor has conveyed, mostly through branding and promotion. Similarly, a firm achieves sufficient "fame" for the purposes of dilution doctrine when the trademark has sufficiently penetrated consumers' consciousness. Proxies are sometimes used in the course of this inquiry: courts might focus on how long the mark has been used in a particular marketing sector, or how many promotion and advertising dollars have been spent on it.
266. Id. at 167.
267. See MCCARTHY, supra note 55, § 15:50.
268. See generally Edmund W. Kitch & Harvey S. Perlman, Intellectual Property and Unfair Competition (5th ed. 1998).
269. Including "Buick," "Bulova," "Cadillac," 'IBM," "Kodak," "Mazda," "Mercedes-Benz," "Packard," "Rolex," "Rolls-Royce," and "Steinway."
270. See Allan K.K. Chan et al., Chinese Brand Names and Global Brand Names: Implications from Two Corpus Analyses, in Conference Report, Proceedings of the Tenth International Business Research Conference 17 (Zia Haqq ed., Apr. 16-17, 2009), http://www.wbiconpro.com/13%5Bl%5D.%20Allan-HK.pdf.
271. See Douglas A. Galbi, A New Account of Personalization and Effective Communication
272. Galbi ThinkI.com http://ThinkI.com (Sept. 16, 2001), http://www. galbithink.org/pers.htm [hereinafter Galbi, A New Account]
273. Douglas A. Galbi, Long Term Trends in Personal Given Name Frequencies in the UK, GALBI THINKl.COM http://THINKl.COM (July 20, 2002), http://www. galbithink.org/names.htm.
274. See Galbi, A New Account, supra note 139, at tbl.3 ("Most Popular Names in England/Wales").
275. See id.
276. See Federal Trademark Dilution Act of 1995, Pub. L. No. 104-98, § 5, 109 Stat. 985, 987 (codified as amended at 15 U.S.C. § 1051 (2006)).
277. See Act of June 24, 1955, § 1, 1953 111. Laws 455 (codified as amended at 765 III.
278. Comp. Stat. Ann. 1036/65 (West 2010)).
279. See Act of Apr. 18, 1955, ch. 453, § 1, 1955 N.Y. Laws 466 (codified as amended at N.Y. GEN. Bus. Law § 368-d) (McKinney 1996 & Supp. 2010)).
280. See Act of Dec. 16, 1982, ch. 12, § 1124, 1982 Pa. Laws 1329 (codified as amended at
281. 54 Pa. Cons. STAT. Ann. § 1124 (West 1996 & Supp. 2010)).
282. 287 F.2d 492 (2d Cir. 1961).
283. See Magliocca, supra note 26, at 1005.
284. See supra text accompanying notes 109-15.
285. See, e.g., S Indus., Inc. v. Diamond Multimedia Sys., Inc., 991 F. Supp. 1012, 1021 (N.D. 111. 1998)
286. Resorts of Pinehurst, Inc. v. Pinehurst Natl Dev. Corp., 973 F. Supp. 552, 554-60 (M.D.N.C. 1997)
287. Circuit City Stores, Inc. v. Officemax, Inc., 949 F. Supp. 409, 415-18 (E.D. Va. 1996).
288. See Viacom Inc. v. Ingram Enters., Inc., 141 F.3d 886, 892 (8th Cir. 1998). One court has also held that a plaintiffs federal dilution claim, made thirty years after defendant's commencement of use and eighteen years after plaintiff should have known of that use, was barred by laches, when there had been a federal dilution claim available for ten years and a state claim for more than thirty years.
289. See Saul Zaentz Co. v. Wozniak Travel, Inc., 627 F. Supp. 2d 1096, 1110-13, 1121 (N.D. Cal. 2008)
290. MCCARTHY, supra note 33, § 24:130 (arguing that a defense of laches should be available against a federal dilution claim even if legislation has just made the federal claim available, so long as a substantially equivalent state dilution claim had been available but was not used by plaintiff).
291. 287F.2d492.
292. See Magliocca, supra note 26, at 1005.
293. 287 F.2d at 498.
294. Id. at 497.
295. This required a great deal of proofreading and editing to ensure that the representations of a business name remained identical in different years. For example, we had to account for differing abbreviations, such as "Co" and "Corp" for "Corporation," or "Eng" and "Engrg" for "Engineering," and for the presence and absence of "Inc" (a business might be listed as "Crest Roofing Co" in one year, and "Crest Roofing Co Inc" in another).
296. Trademark Dilution Revision Act of 2006, Pub. L. No. 109-312, §2(c)(2)(B)(iii), 120 Stat. 1730, 1731 (2006) (codified as amended at 15 U.S.C. §1125(c)(2)(B)(iii) (2006)).
297. See supra text accompanying notes 39-45.
298. We make a guess with the thirty-seven brands we graph in Figure 2.
299. One formulation of a test to determine whether third-party uses would affect dilution protection was articulated by Anne Gundelfinger, testifying as the President of the International Trademark Association during a hearing on the TDRA. As she put it, the question is whether those uses "have ⋯ visibility to the average consumer." Trademark Dilution: Hearing on H.R. 683 Before the Subcomm. on Courts, the Internet, and Intellectual Property of the H. Comm. on the Judiciary, 109th Cong. (2005) [hereinafter Testimony] (testimony of Anne Gundelfinger, President, Int'l Trademark Assoc.) ("[W]here other similar marks are already in wide use and have been over a lengthy period of time, it may be less likely that the junior use will have the effect of blurring the famous mark, unless those uses have little or no visibility to the average consumer.").
300. See Beebe, supra note 56, at 463.
301. See Brauneis & Heald, supra note 10 (spreadsheet InHInG 1960-2010).
302. See id.
303. See id.
304. See id.
305. See Testimony, supra note 159 (testimony of Anne Gundelfinger on the interpretation of "substaintially exclusive use").
306. One example of such a finding can be found in Nike, Inc. v. Nikepal International, Inc., 84 U.S.P.Q.2d 1820 (BNA) (E.D. Cal. 2007). In that case, the defendant Nikepal argued that Nike, Inc. was not engaged in substantially exclusive use of the mark "Nike" because another company, Nike Hydraulics, Inc., had been continuously using the mark for 50 years and had held a federal registration for it since 1958.
307. Id. at 1827.
308. The court rejected that argument, noting that defendant's witness had himself not been personally familiar with Nike Hydraulics, Inc. before commencement of the litigation.
309. Id.
310. Most of the uses in white pages telephone books are not the subject of a federal registration and are on a far smaller scale than Nike Hydraulics, Inc.
311. Nikepal did not even attempt to look for uses on that scale, but confined itself to a search of the federal register.
312. The five registrations appear as results of a search performed on the online Trademark Electronic Search System ("TESS")
313. A search session on this system may be opened by following a hyperlink from the U.S. Patent and f=tess&state=4006:58if9m.l.l Oast visited Dec. 10, 2010). There may have been more than five registrations, because the database that is accessed through that system does not contain records of all of the registrations that were cancelled before the 1990s.
314. See NIKE, Registration No. 622,166 (cancelled).
315. See NIKE, Registration No. 771,978 (expired).
316. See NIKE, Registration No. 775,529 (cancelled).
317. See THE NIKE CLUB, Registration No. 862,551 (expired).