Proving Fame for Trademark Dilution Claims

By: Roberta Jacobs-Meadway

This article addresses how to prove a trademark is famous when asserting a dilution claim in federal court or in a Trademark Trial and Appeal Board (TTAB) proceeding pursuant to the Trademark Dilution Revision Act of 2006 (TDRA).¹ Topics discussed include the legal standard for fame, the statutory fame factors, and the types of evidence that may be submitted.

Legal Standard for Fame

To assert a dilution claim under the TDRA, the plaintiff’s mark must be famous. The statute defines a famous mark as “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.”² It also lists four non-exclusive factors that courts may consider when assessing fame. Statutory fame factors are discussed later in this article.

Fame is a high standard that is hard to meet. Plaintiffs must show that “when the general public encounters the mark in almost any context, it associates the term, at least initially, with the mark’s owner.”³

Relatively few marks qualify as famous under the TDRA, aside from those that are truly “household names” or “part of the collective national consciousness.”⁴

Examples of famous marks include:

Statutory Fame Factors

The statutory factors for determining whether a mark is famous for dilution purposes are:

• The duration, extent, and geographic reach of advertising and publicity of the mark, by either plaintiff or third parties
• The amount, volume, and geographic extent of sales of goods or services offered under the mark
• The extent of actual recognition of the mark
• Whether the mark is registered on the Principal Register or under earlier federal trademark acts

These factors are non-exclusive and, as such, courts may consider any other relevant evidence in assessing fame.⁶ Other types of evidence that may be considered are discussed later in this article.

Note that a plaintiff’s mark must have become famous prior to the defendant’s allegedly diluting use.⁷ It is therefore crucial to submit evidence of fame for the relevant time period (i.e., up to the date that the defendant first used its mark in commerce). Bear this in mind when evaluating and gathering evidence of fame.

Factor One: Advertising and Publicity of Mark

The first statutory fame factor is the duration, extent, and geographic reach of advertising and publicity of the mark (by either plaintiff or third parties).⁸ Generally, the longer a mark has been used and advertised and the more widespread the advertising and publicity, both geographically and across different types of media, the more likely the mark will be found famous. However, there are no hard and fast rules as to what will be deemed sufficient in a given case. You must gather and weigh all relevant evidence.

Length of Use

While length of use is one factor to consider, it is typically not the most significant factor. For instance, marks have been found famous when used for nearly 100 years (or longer) in some cases, but not others.⁹

Other examples include:

• Marks found famous. Prozac (11 years’ use); Animal Planet (5 years’ use).
• Marks found not famous. Bongo (15 years’ use); trade dress (50 years’ use).¹⁰

Advertising Expenditures

Large amounts of money spent on advertising a mark can bolster a fame argument but, standing alone, will generally not be sufficient to establish fame.¹¹

Examples of advertising expenditures that aided (or did not aid) a finding of fame include:

• Marks found famous. Just Do It ($6 billion spent over 20-plus years); Tempur-Pedic (over $250 million spent over three-year period).
• Marks found not famous. Navajo ($3.8 million spent annually); Clue (millions of dollars spent on advertising).¹²

Be sure to provide context for all advertising figures. Determine the amount plaintiff spent on advertising products sold under the mark (over a significant period of time) vis-à-vis the amounts spent by major competitors. This will give you an idea of the significance of the number in the marketplace and whether a court is likely to find the amount compelling.

Extent and Geographic Reach of Advertising

Clearly, to establish nationwide fame, it is best for a plaintiff to point to many instances of nationwide advertising. Plaintiff should cite all national, regional, and local advertising campaigns that have prominently featured the mark at issue, such as advertisements appearing on or in:

• Magazines
• Newspapers
• Television
• Radio
• Podcasts
• Billboards
• Subways and bus stops
• The internet
• Social media

The longer and more extensive the advertising efforts, the more likely the mark will be deemed famous.¹³

Be sure to include any advertising by third parties, such as retailers or other mark owners engaging in cross-promotional or co-branded activities. Advertising by both the plaintiff and third parties is relevant to the first fame factor.¹⁴

While you should highlight any online advertising efforts, be aware that courts may discount the value of such evidence given the ubiquity of the internet. Also, as a practical matter, viewers of the ads may come from one or many states, making it difficult to measure the true geographic reach of the advertising.¹⁵

Publicity of Mark

Publicity of the mark, by either the plaintiff or third parties, is also relevant. Aside from traditional advertising, a plaintiff may publicize its mark in various ways, such as through:

• Press releases
• Trade shows or conferences
• Event sponsorship and promotion

Third-party publicity bears not only on factor one, but also on factor three.¹⁶

Factor Two: Sales of Goods or Services Offered under Mark

The second statutory fame factor is the amount, volume, and geographic extent of sales of goods or services offered under the mark.¹⁷ Generally, the more widespread the plaintiff’s sales and the higher the sales figures, the more likely the mark will be deemed famous. As with the first fame factor, however, there are no bright-line rules; what is sufficient for a finding of fame will vary from case to case.

Amount and Volume of Sales

As one district court has explained, “courts generally have limited famous marks to those that receive multimillion-dollar advertising budgets, generate hundreds of millions of dollars in sales annually, and are almost universally recognized by the general public.”¹⁸

Examples of sales figures that aided a finding of fame include:

• Hot Wheels (three billion units sold in all 50 states and throughout the world over a 37-year period)
• Jack Daniel’s (best-selling whiskey in the United States since 1997, exceeding 75 million cases and $10 billion in sales)
• PODS (nationwide network of PODS locations and franchises and cumulative sales of more than $3 billion)
• Rolex (annual U.S. sales in the “hundreds of millions of dollars”)¹⁹

Bear in mind, however, that large sales figures per se are not enough to establish fame. They may certainly bolster a fame argument, but if your other evidence of fame is weak, a judge is unlikely to rule in your favor. For instance, the following marks were found not famous despite fairly significant sales evidence:

• The Children’s Place (sales of $280 million in 1998 through 228 retail stores, having grown from $100 million through 87 stores in 1994)
• XOXO (sales of hundreds of millions of dollars of goods sold nationwide through brick-and-mortar stores and online)
• Yellow and black trade dress for power tools (trade dress not famous, despite over $20 billion in sales nationwide since 1992, where plaintiffs failed to show fame among the general consuming public, as opposed to the niche market of DIYs and professional tradesmen)
• Red dripping wax seal used on bottles of bourbon (annual U.S. sales of 800,00 cases, with each bottle retailing at about $24)²⁰

To strengthen your sales evidence, be sure to provide context for all sales figures. Determine the number of units sold annually and the dollar amounts of such sales (over a significant number of years) and compare these figures to those of plaintiff’s major competitors. This will give you an idea of plaintiff’s standing in the marketplace and whether a court is likely to find the numbers compelling. For instance, being a top seller in a category of goods by a 3:1 margin over the next largest competitor would be more persuasive than having high revenues but only a 10% market share.

Note that where goods are inexpensive, high volume may be more telling than gross revenues, and similarly, volume may be less significant where the goods are expensive.²¹

Volume also must be viewed in context. For instance, for nontraditional sales such as downloads of an app or visitors to a website, volume would need to be especially high to be persuasive, as evidenced by the following cases:

• Marks found famous. Yelp (website averaged 102 million monthly unique visitors between January and March 2013).
• Marks found not famous. Pinterest, Pin, and Pin It (website had 25 million monthly active users by October 2012, about 8% of the U.S. population); Perfect365 (20 million U.S. downloads of selfie app).²²

Finally, be sure to cite the specific retail outlets and websites through which plaintiff’s goods are sold. For instance, in the E.A. Sween case, plaintiff’s food products were sold “through a variety of retail outlets throughout the country, including convenience stores, delis, drug stores, gas stations, truck stops, resorts, and vending machines,” which supported a finding of fame.²³

Geographic Extent of Sales

To establish nationwide fame, plaintiff must show that its goods are sold (or services rendered) across the United States. It is best to point to sales in multiple locations in many states. For example, the Red Lobster mark would more likely be deemed famous, based on approximately 700 locations in 44 states, than the mark of a restaurant chain in a tristate region with only 60 locations.²⁴

In some instances, however, the goods or services associated with a mark will be sold or rendered in a single location. This fact will not preclude a finding of fame if the mark is otherwise widely recognized by the general consuming public. For instance, the following marks were found famous despite being associated with only one location (New York City):

• Empire State Building
• The House that Ruth Built²⁵

Factor Three: Extent of Actual Recognition of Mark

The third statutory fame factor is the extent of actual recognition of the mark.²⁶ When analyzing this factor, courts consider whether the mark is widely recognized by the general consuming public of the United States. Local or niche fame is insufficient.

To show that a mark is widely recognized by the general public, plaintiffs generally submit two types of evidence:

• Third-party publicity
• Consumer surveys

Third-Party Publicity

Unsolicited and extensive media attention can be a powerful indication of fame. For instance, in TiVo Brands LLC v. Tivoli, LLC, 129 U.S.P.Q.2d (BNA) 1097 (TTAB 2018), third-party recognition of opposer’s TIVO mark tipped the balance in favor of finding the mark famous for dilution purposes (as of 2010). This evidence included:

• Clips from television shows referencing TIVO digital video recorders (DVRs)
• A 2008 Los Angeles Times article referring to TIVO as having “near household-name recognition”
• News articles from 2010 describing the TIVO DVR as an “iconic brand,” “revolutionary,” and a “pioneer” product (some also repeated text from a May 25, 2010 press release)
• A media analysis and reporting report generated through Cision, a third-party analytics vendor, detailing over 30,000 mentions of TIVO in news outlets from January 2000 to April 2009²⁷

Other examples of third-party publicity include:

• Associations of the mark with celebrities (e.g., photographs of celebrities carrying Chanel-branded handbags or wearing Chanel fashions that are published in tabloid magazines)
• Brand rankings (e.g., BusinessWeek’s annual “Best Global Brands” article that lists the top 100 brands in the world)
• Industry-specific awards
• The mark’s appearance in movies, television shows, books, museums, etc.²⁸

Brand owners should thus collect and maintain, in the ordinary course of business, an archive of unsolicited media mentions, rankings, awards, etc., noting the level of exposure or “hits.” Recorded interviews with key individuals (e.g., vendors, customers, social media influencers) made at appropriate points in the relationship—such as at inception, termination, or on reaching some significant milestone—may also be useful. Gathering such materials throughout the life of a brand will make proving fame easier if a dilution lawsuit is later filed (or conversely, a paucity of evidence will indicate the potential weakness of a dilution claim).

Consumer Surveys

Consumer surveys are often submitted as evidence of fame under the third fame factor. While surveys are not technically required, they can provide strong evidence of fame (assuming they are properly structured and conducted). Conversely, the absence of a survey can negatively impact your case, especially if the other evidence of fame is not strong.²⁹

If, on the other hand, you have extensive evidence of fame but no survey (or unfavorable survey results), a court may overlook the lack of survey evidence and find the mark famous, depending on the facts of the case.³⁰

There are three major issues to note with fame surveys:

• Survey universe (who constitutes the general consuming public?)
• Level of recognition (what percentage of recognition is necessary for a mark to be widely recognized?)
• Timing of survey (during what time period must fame be measured?)

Factor Four: Federal Registration of Mark

The fourth statutory fame factor is whether the mark is federally registered on the Principal Register or under earlier federal trademark acts.³¹

While federal registration is not required to bring a dilution claim under the TDRA, the lack of a Principal Register registration weighs against a finding of fame (and, as a practical matter, courts are very unlikely to find an unregistered mark famous absent strong evidence of fame under the other factors).³²

Rare examples of courts finding unregistered marks (or trade dress) famous include:

• Gucci’s Diamond Motif Trade Dress (the Repeating GG Pattern with a pair of inverted Gs in each corner rendered in a brown/ beige color combination)
• The Dallas Cowboys’ America’s Team mark³³

While it is strongly advised that a dilution plaintiff own a federal registration, note that simply owning a registration is not, by itself, sufficient to show fame. This is merely one factor to consider in the analysis (and in most cases, the least important of the factors).³⁴

When submitting a federal registration as evidence of fame, be sure to highlight:

• That the mark is registered on the Principal Register (not the Supplemental Register)
• How long the mark has been registered
• Whether the registration is incontestable
• Whether the mark is registered for a wide range of goods/ services (if so, it may be easier to prove that dilution is likely)
• Related registrations (e.g., if plaintiff alleges dilution of a family of marks or owns other registrations for the same or closely similar marks for different goods or services)

Incontestability is conclusive evidence of validity (i.e., distinctiveness). To bring a dilution claim under the TDRA, a mark must be both famous and distinctive. While fame is usually the contested issue, having an incontestable registration would obviate the need to separately establish distinctiveness.

Other Evidence of Fame

Because the statutory fame factors are nonexclusive, courts are free to consider other evidence when assessing fame for dilution purposes.³⁵ Thus, do not limit yourself to the statutory factors. Carefully evaluate whether any other types of evidence may support a finding of fame in your client’s case. Also research the case law in your jurisdiction to see what types of additional evidence (if any) judges have found persuasive.

Relevant evidence might include:

• An absence of commercially significant third-party uses
• Admissions of fame by defendant
• Prior judicial determinations of fame

Absence of Commercially Significant Third-Party Uses

Under the Federal Trademark Dilution Act of 1995 (which preceded the current dilution statute), one of the fame factors was “the nature and extent of use of the same or similar marks by third parties.” Essentially, if a plaintiff’s mark was a common word used by numerous third parties, such a fact would weigh against a finding of fame.³⁶

Stated another way, extensive, commercially significant third-party uses of the same or similar marks (especially for unrelated goods/ services) would weigh against fame because the mark would be associated with multiple entities and not just plaintiff. Thus, showing an absence of commercially significant third-party uses could point towards a mark being famous.

Under the current statute (the TDRA), this principle does not appear as an express, enumerated fame factor. Rather, the TDRA lists six nonexclusive factors that courts may consider in determining whether a mark is likely to cause dilution by blurring. One of those factors is “the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.”³⁷

However, courts may still consider this issue in a fame analysis when appropriate evidence is made of record.³⁸

Admissions of Fame by Defendant

A defendant may sometimes admit that plaintiff’s mark is famous (e.g., in the answer to the complaint, discovery responses, proposed findings of fact, etc.). Such admissions of fame will likely be accepted so long as they are clear and directed towards dilution fame, rather than likelihood of confusion fame.

For instance, courts (or the TTAB) credited admissions of fame as to the following marks:

• Superman, Superwoman, and the appearance of Superman in his blue bodysuit with the letter “S” inside a five-sided shield on the chest and a red cape (based on applicant’s admissions in the answer in an opposition proceeding)
• Top hat logo design of the New York Yankees (based on applicant’s response to a request for admission and the record evidence in an opposition proceeding)
• Just Do It (based on applicants’ “compelling” responses to an interrogatory and a document production request in an opposition proceeding)
• Fendi (based on defendants’ admission in the answer)
• Planet Hollywood word mark and design marks (based on defendants’ admission in their proposed findings of fact and other substantial evidence offered during the proceeding)³⁹

Prior Judicial Determinations of Fame

Submitting evidence of past judicial decisions finding your client’s mark famous, or referencing the fame of the mark, can bolster your client’s arguments of fame in the instant case. Bear in mind, however, that each case must be decided on its own facts. Courts (or the TTAB) are not bound to follow the decision by another court against a different entity based upon a different record.⁴⁰

Evidence of prior judicial determinations of fame may be more persuasive if:

• Dilution fame was found (not likelihood of confusion fame)
• The same mark was at issue
• The same general timeframe was at issue (i.e., the date by which plaintiff’s mark must have been famous)
• Identical or very similar facts were presented
• The case was decided by the same court hearing the present case (or a court in the same jurisdiction, such as another district court within the Second Circuit).⁴¹

Roberta Jacobs-Meadway has more than 40 years of experience representing clients in a wide range of industries in connection with trademark, copyright, and unfair competition matters. Her practice includes litigating intellectual property disputes in the federal courts and trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board. She has significant experience in connection with the licensing of intellectual property and counseling with respect to trademark and copyright issues.

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1. 15 U.S.C.S. § 1125(c). 2. 15 U.S.C.S. § 1125(c)(2)(A). 3. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1373 (Fed. Cir. 2012) (quotations and citations omitted). 4. Thane Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 911 (9th Cir. 2002); see also Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1011 (9th Cir. 2004) (dilution is a cause of action “reserved for a select class of marks—those marks with such powerful consumer associations that even non-competing uses can impinge on their value”). 5. See Bd. of Regents, Univ. of Tex. Sys. ex. rel. Univ. of Tex. at Austin v. KST Elec., Ltd., 550 F. Supp. 2d 657 (W.D. Tex. 2008) (listing examples of famous marks from the TDRA’s legislative history and previous cases); Maker’s Mark Distillery, Inc. v. Diageo N. Am., Inc., 703 F. Supp. 2d 671, 698 (W.D. Ky. 2010) (listing examples of marks found famous under the TDRA). 6. 15 U.S.C.S. § 1125(c)(2)(A). 7. 15 U.S.C.S. § 1125(c)(1). 8. 15 U.S.C.S. § 1125(c)(2)(A)(i). 9. Cf., e.g., Rolex Watch U.S.A. Inc. v. AFP Imaging Corp., 101 U.S.P.Q.2d (BNA) 1188, 1191‒92 (TTAB 2011), vacated on other grounds, 2013 TTAB LEXIS 46 (TTAB 2013) (Rolex famous where used continuously and exclusively since 1915, and there was no evidence of any third-party usage or registration of similar marks), with Theta Chi Fraternity, Inc. v. Leland Stanford Junior Univ., 212 F. Supp. 3d 816, 827 (N.D. Cal. 2016) (Theta Chi marks not famous, even though marks had been used for 160 years, where there were only 175,000 members over that period of time). 10. See Eli Lilly & Co. v. Natural Answers, Inc., 86 F. Supp. 2d 834, 849 (S.D. Ind. 2000) (“massive publicity” made Prozac famous “despite its relatively short life”); Discovery Commc’ns, Inc. v. Animal Planet, Inc., 172 F. Supp. 2d 1282, 1291 (C.D. Cal. 2001) (Animal Planet famous due to “extensive use with a variety of products and services since 1996”); Michael Caruso & Co. v. Estefan Enters., Inc., 994 F. Supp. 1454, 1463 (S.D. Fla. 1998) (Bongo not famous where publicity and advertising only targeted junior women’s apparel market and mark was only used for 15 years); Hershey Foods Corp. v. Mars, Inc., 998 F. Supp. 500 (M.D. Pa. 1998) (Reese’s trade dress not famous, despite its use for half a century and other positive evidence, where it was unregistered and similar to other third-party marks in the food industry). 11. See, e.g., Schutte Bagclosures Inc. v. Kwik Lok Corp., 48 F. Supp. 3d 675, 702 (S.D.N.Y. 2014). 12. See Nike Inc. v. Maher, 100 U.S.P.Q.2d (BNA) 1018, 1026 (TTAB 2011); Dan-Foam A/S v. Brand Name Beds, LLC, 500 F. Supp. 2d 296, 323 n.209 (S.D.N.Y. 2007); Navajo Nation v. Urban Outfitters, Inc., 2016 U.S. Dist. LEXIS 63599, at *10‒11 (D.N.M. May 13, 2016); Hasbro, Inc. v. Clue Computing, Inc., 66 F. Supp. 2d 117, 131 (D. Mass. 1999). 13. See, e.g., Toys “R” Us, Inc. v. Akkaoui, 1996 U.S. Dist. LEXIS 17090 (N.D. Cal. Oct. 29, 1996) (finding fame where plaintiffs advertised their products “through a variety of channels both locally and nationally”). 14. See, e.g., Chanel, Inc. v. Camacho & Camacho, LLP, 2018 TTAB LEXIS 13, at *25 (TTAB Jan. 12, 2018) (not precedential) (third-party retailers such as Bergdorf Goodman, Saks Fifth Avenue, and Bloomingdales advertised and promoted opposer’s products bearing the mark at issue through print advertising, catalogs, and other means). 15. See, e.g., Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 879 (9th Cir. 1999) (noting that “worldwide use of a non-famous mark,” such as by marketing products on the internet, “does not establish fame”); Global Brand Holdings, LLC v. Church & Dwight Co., 2017 U.S. Dist. LEXIS 208759, at *12‒13 (S.D.N.Y. Dec. 19, 2017) (allegations that plaintiff used its XOXO marks widely in internet advertisements not sufficient to state a plausible claim that marks are famous). 16. See, e.g., TiVo Brands LLC v. Tivoli, LLC, 129 U.S.P.Q.2d (BNA) 1097, 1104 (TTAB 2018). 17. 15 U.S.C.S. § 1125(c)(2)(A)(ii). 18. Schutte Bagclosures Inc. v. Kwik Lok Corp., 48 F. Supp. 3d 675, 702 (S.D.N.Y. 2014). 19. See Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 635 (9th Cir. 2008); VIP Prods., LLC v. Jack Daniel’s Props., Inc., 291 F. Supp. 3d 891, 900 (D. Ariz. 2018); PODS Enters., LLC v. U-Haul Int’l, Inc., 126 F. Supp. 3d 1263, 1277 (M.D. Fla. 2015); Rolex Watch U.S.A. Inc. v. AFP Imaging Corp., 101 U.S.P.Q.2d (BNA) 1188, 1192 (TTAB 2011), vacated on other grounds, 2013 TTAB LEXIS 46 (TTAB 2013). 20. See TCPIP Holding Co. v. Haar Commc’ns Inc., 244 F.3d 88, 100 (2d Cir. 2001); Global Brand Holdings, LLC v. Church & Dwight Co., 2017 U.S. Dist. LEXIS 208759, at *13 (S.D.N.Y. Dec. 19, 2017); Black & Decker Corp. v. Positec USA Inc., 2015 U.S. Dist. LEXIS 42968, at *106 (N.D. Ill. Mar. 31, 2015); Maker’s Mark Distillery, Inc. v. Diageo N. Am., Inc., 703 F. Supp. 2d 671, 698 (W.D. Ky. 2010). 21. See, e.g., E.A. Sween Co. v. Deli Express of Tenafly, LLC, 19 F. Supp. 3d 560, 573 (D.N.J. 2014) (Deli Express mark found famous where more than one million sandwiches were sold across the country per week). 22. See Yelp Inc. v. Catron, 70 F. Supp. 3d 1082, 1096 (N.D. Cal. 2014); Pinterest, Inc. v. Pintrips, Inc., 140 F. Supp. 3d 997, 1034 (N.D. Cal. 2015); ArcSoft, Inc. v. CyberLink Corp., 153 F. Supp. 3d 1057, 1066‒67 (N.D. Cal. 2015). 23. E.A. Sween Co. v. Deli Express of Tenafly, LLC, 19 F. Supp. 3d 560, 573 (D.N.J. 2014). 24. See, e.g., McDonald’s Corp. v. McSweet, LLC, 112 U.S.P.Q.2d (BNA) 1268, 1287 (TTAB 2014) (“MC” family of marks famous due, in part, to opposer operating over 14,000 restaurants across the United States that collectively serve an average of 26 million people per day). 25. See ESRT Empire State Bldg., L.L.C. v. Liang, 2016 TTAB LEXIS 270, at *22 (TTAB June 17, 2016) (not precedential) (noting that visitors from around the world visit opposer’s observation deck daily and are exposed to multiple uses of the mark on everything from tickets to uniforms to gift items to the building itself); N.Y. Yankees P’ship v. IET Prods. & Servs., Inc., 114 U.S.P.Q.2d (BNA) 1497, 1505 (TTAB 2015) (over 63 million people had attended Yankees home games since 1990). 26. 15 U.S.C.S. § 1125(c)(2)(A)(iii). 27. See, e.g., Thane Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 912 (9th Cir. 2002) (press accounts about the popularity of a brand or pop-culture references can provide evidence of fame). 28. See, e.g., Chanel, Inc. v. Makarczyk, 110 U.S.P.Q.2d (BNA) 2013, 2021 (TTAB 2014). 29. See, e.g., Lingo v. Lingo, 785 F. Supp. 2d 443, 455 (D. Del. 2011) (LINGO’S MARKET not famous where plaintiffs provided no evidence of consumer surveys or advertisements outside of the Rehoboth Beach community); Network Automation, Inc. v. Hewlett-Packard Co., 2009 U.S. Dist. LEXIS 125835, at *33 (C.D. Cal. Sept. 14, 2009) (plaintiff’s failure to present any survey or expert opinion regarding the extent of actual recognition of the Network Automation mark weighed heavily in favor of finding the mark not famous). 30. See, e.g., H-D U.S.A., LLC v. SunFrog, LLC, 311 F. Supp. 3d 1000, 1043 (E.D. Wis. 2018) (disregarding lack of survey given “overwhelming” evidence of fame of Harley Davidson marks); UMG Recordings Inc. v. Mattel Inc., 100 U.S.P.Q.2d (BNA) 1868, 1887 (TTAB 2011) (finding Motown mark famous, despite lack of survey evidence, where the evidence of public exposure was so strong that the Board could infer “significant actual recognition among the general public”); Adidas Am., Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029, 1063 n.12 (D. Or. 2008) (“Given the extensive evidence adidas submitted as to each of the statutory ‘fame’ factors, its failure to conduct a fame survey is not dispositive.”). 31. 15 U.S.C.S. § 1125(c)(2)(A)(iv). 32. See, e.g., Hershey Foods Corp. v. Mars, Inc., 998 F. Supp. 500, 517 (M.D. Pa. 1998) (noting that “failure to register counts against a finding of fame” as a person “would be expected to register a famous mark;” Reese’s unregistered trade dress found not famous); Juice & Java, Inc. v. Juice & Java Boca, LLC, 2017 U.S. Dist. LEXIS 6913, at *16 (S.D. Fla. Jan. 17, 2017) (noting that “one could logically infer lack of fame from a lack of registration”). 33. See Gucci Am., Inc. v. Guess?, Inc., 868 F. Supp. 2d 207, 219 (S.D.N.Y. 2012); Dallas Cowboys Football Club, Ltd. v. Am.’s Team Props., Inc., 616 F. Supp. 2d 622, 643 (N.D. Tex. 2009). 34. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1374 (Fed. Cir. 2012). 35. 15 U.S.C.S. § 1125(c)(2)(A). 36. See, e.g., Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 878 (9th Cir. 1999) (AVERY DENNISON not famous); Hasbro, Inc. v. Clue Computing, Inc., 66 F. Supp. 2d 117, 132 (D. Mass. 1999) (CLUE not famous). 37. 15 U.S.C.S. § 1125(c)(2)(B)(iii). 38. See, e.g., Juice & Java, Inc. v. Juice & Java Boca, LLC, 2017 U.S. Dist. LEXIS 6913, at *16 (S.D. Fla. Jan. 17, 2017) (stating in fame analysis that “[t]hird-party use of the same or similar marks undermines any claim of distinctiveness for purposes of a dilution claim”); Rolex Watch U.S.A. Inc. v. AFP Imaging Corp., 101 U.S.P.Q.2d (BNA) 1188, 1192 (TTAB 2011), vacated on other grounds, 2013 TTAB LEXIS 46 (TTAB 2013) (noting in fame analysis that ROLEX “is a coined and fanciful term with no other meaning other than its significance as a trademark” and that the record “is devoid of any third-party usage or registration of similar marks”). 39. See DC Comics v. Rivetti, 2017 TTAB LEXIS 318, at *15 (TTAB Aug. 17, 2017) (not precedential); N.Y. Yankees P’ship v. IET Prods. & Servs., Inc., 114 U.S.P.Q.2d (BNA) 1497, 1503 (TTAB 2015); Nike Inc. v. Maher, 100 U.S.P.Q.2d (BNA) 1018, 1024 (TTAB 2011); Fendi Adele S.r.l. v. Filene’s Basement, Inc., 696 F. Supp. 2d 368, 390 (S.D.N.Y. 2010); Planet Hollywood (Region IV), Inc. v. Hollywood Casino Corp., 80 F. Supp. 2d 815, 834, 896 (N.D. Ill. 1999). 40. See, e.g., Citigroup Inc. v. Capital City Bank Grp., Inc., 94 U.S.P.Q.2d (BNA) 1645, 1665 (TTAB 2010). 41. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1375‒76 (Fed. Cir. 2012); Mattel, Inc. v. S.W. Fantasies, Inc., 2012 TTAB LEXIS 392, at *20 (TTAB Sept. 26, 2012) (not precedential); Adidas Am., Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029, 1063 (D. Or. 2008).