Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Congress enacted the Trademark Dilution Revision Act (the "TDRA") about one year ago in an effort to resolve numerous open trademark issue.*  Many believe that the TDRA has opened more questions than it answered.  The University of Michigan Law Review's First Impressions blog recently addressed those issues with a series of articles:

• Dilution's (Still) Uncertain Future
  Graeme Dinwoodie, Chicago-Kent College of Law
  Mark Janis, University of Iowa College of Law
  Looking at the litigation history of trademark dilution.

• What is Dilution, Anyway?
  Stacey Dogan, Northeastern University School of Law
  Considering the underlying meaning of dilution.

• The Trademark Dilution Revision Act of 2006: A Welcome — and Needed — Change
  Dale Cendali & Bonnie Schriefer, O'Melveny & Myers LLP
  Explaining why the TDRA clarifies and strengthens First Amendment protections.

• The Dilution Solution: Populating the Trademark A-list
  Scott Wilcox, University of Michigan Law School
  Looking at the court as arbiters of fame.

*  For more on the TDRA, click here for the Blog's archives and click here for the Seattle Trademark Lawyer’s coverage of the TDRA's first anniversary.

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Hickory Farms, Inc. v. Snackmasters, Inc., No. 05 C 4541, 2007 WL 772919 (N.D. Ill. Mar. 8, 2007) (Kennelly, J.).

Judge Kennelly held that plaintiff's "Beef Stick" and "Turkey Stick" marks were generic and canceled the Beef Stick mark, plaintiff had already let its "Turkey Stick" registration lapse.  Plaintiff alleged that defendant infringed its marks by marketing defendant's beef and turkey snacks in stick forms and labeling them "Beef Sticks" and "Turkey Sticks," respectively.  But defendant countered with evidence that numerous companies use the terms to refer to meat products sold sell in stick form.  For example, Trader Joe's, Flat Iron, Jimmy Dean, Slim Jim and Tombstone all sell meat stick products using the marks.  The Court held that the terms were generic because they name a class of goods -- meat packaged in a stick form.  The Court also noted that "it [was] difficult to imagine what else a seller would call a beef or turkey product packaged in stick form."

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McKillup Indus., Inc. v. Integrated Label Corp., No. 06 C 3279, 2006 WL 3775954 (N.D. Ill. Dec. 19, 2006) (Bucklo, J.).

Judge Bucklo denied summary judgment that defendant's "integrated labels," "integrated cards" and "integrated forms" marks were generic.  Plaintiff argued that the marks were generic based upon the separate dictionary definitions of "integrated" and "labels/cards/forms" (although there was no dictionary definition of either of the three whole marks) and evidence that competitors use the term, including a Google search of each of the marks.

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Cobra Capital LLC v. LaSalle Bank Corp., __ F. Supp.2d __, 2006 WL 2720626 (N.D. Ill. Sept. 19, 2006) (Bucklo, J.)

In this trademark infringement dispute, Judge Bucklo denied defendants' summary judgment motion because there were material issues of fact regarding, among other things, the protectability of the marks at issue ("Making Impossible Possible" and "Make the Impossible Possible").  Defendants argued that the marks were descriptive of the banking and lease financing industry, and that the marks were "merely common self-laudatory advertising."  The Court, however, disagreed, stating that the latter argument  "borders on frivolous" and noting that defendants' argument was harmed by their corporate parent's pending application for the similar mark "Making More Possible."

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