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Trademark dilution surveys: the senior user must first prove that its mark is famous

Before commissioning a trademark dilution survey, plaintiffs must first establish that its senior mark is famous. One of the most widely used and accepted methods for establishing fame is to conduct a fame survey among the relevant consumer population.

In Navajo Nation v. Urban Outfitters, Inc., Plaintiff Navajo Nation alleged that Urban Outfitters and two of its subsidiaries infringed on the tribe’s trademark rights by selling goods using the “Navajo” and “Navaho” names. Navajo Nation asserted trademark infringement and dilution claims, among others. Urban Outfitters moved for partial summary judgment on the Navajo Nation’s trademark dilution claims.

As described previously, to maintain a successful blurring or tarnishment dilution claim, the TDRA requires that the senior mark be famous and the evidentiary burden is on the plaintiff to show so. Here, Navajo Nation argued that the “Navajo” marks are well-known across the nation as an authentic brand of Indian-made goods. In support, Navajo Nation introduced evidence that they sell or offer goods and services using the “Navajo” trademark and spend over $3.8 million a year to promote such goods and services. Navajo Nation also contended that they sold “Navajo” blankets as early as before the turn of the century.

The court however stated that to prove that a mark is famous requires more than widespread distribution or significant advertising expenditures. Instead, fame for trademark dilution requires widespread recognition to the point where the mark has become a household name. Consequently, although the Navajo Nation maintained that they spend over $3.8 million annually to promote “Navajo” in various industries, the court opined that such spending was not sufficient to suggest that the “Navajo” marks are recognized as a household name. The court went on to state that “conclusory allegations of nationwide recognition without surveys or other supporting evidence are insufficient to show that a mark is a household name”. Ultimately, the court held that the Navajo Nation’s evidence was not legally sufficient to establish a famous mark, and as a result, granted Urban Outfitter’s motions for partial summary judgment and dismissed the trademark dilution claims.

This is another case where a consumer survey could have been introduced as evidence to potentially defeat full or partial motions for summary judgment. Conducting a fame survey followed by a trademark dilution survey would likely have been helpful to Navajo Nation. Although the remaining claims survived, the parties eventually reached a settlement. Had the trademark dilution claims survived partial summary judgment, Navajo Nation would likely have been in a better position when negotiating the settlement agreement.

To learn more about fame surveys or dilution surveys, please contact us.