Dimensión Motivación

Before passage of the Federal Trademark Dilution Act, statutory law

granted mark holders protectable interests in trademarks that were

restricted in scope to the use of the marks in commerce. Mark holders

were not accorded “trademarks in gross,”

_{and did not have a right to}

The presumption of a likelihood of confusion from intentional copying has outlived its usefulness. With the explosion of private label manufacturing, it no longer makes sense to infer that one who deliberately copies the trade dress of a competitor does so with the intention of confusing consumers. By copying the trade dresses of their brand name competitors, private label manufacturers can effectively describe to consumers the brand name products to which their private label products correspond. A presumption of a likelihood of confusion from intentional copying would discourage such instances of beneficial copying and therefore harm rather than protect consumers by depriving them of information about—and access to—lower-cost alternatives to brand name products. Thus, unless a clear intent to confuse consumers is proved by direct evidence, courts should decline to infer anything at all from evidence of intentional copying. Instead, courts should focus their efforts on the real issue: whether two trade dresses are so similar as to create a genuine likelihood of confusion among consumers.

Id.

163. See, e.g., McNeil-PPC, Inc. v. Guardian Drug Co., 984 F. Supp. 1066, 1074 (E.D. Mich. 1997).

164. See, e.g., Interstellar Starship Servs. Ltd. v. Epix, Inc., 983 F. Supp. 1331, 1334–35 (D. Or. 1997).

prevent usage of even an identical mark on an unrelated product or

service unless this was deemed likely to confuse consumers. As

discussed above, dilution protection creates something akin to

trademarks in gross for eligible marks. However, even absent dilution

doctrine or analysis, where a large corporation uses the same mark on a

diverse variety of products, some courts have been willing to accord a

presumptive right on the part of the entity to be the only user of the mark

in any commercial context on the grounds that multiple users of a mark

will cause consumer confusion.

_{For example, the fact that Virgin}

Enterprises Limited and its related companies (collectively, the “Virgin

Group”) operated various worldwide businesses that included an airline,

a travel-related company, a limousine service, a soft drink bottler and

distributor, and a chain of retail stores selling CDs, books, and clothing,

all using the Virgin trademark and service mark, gave it the right to

prevent an unrelated retail gasoline establishment from calling itself

“Virgin Petroleum.”

_{This despite the fact that the Virgin Group was}

not in the fuel business at all, and there were of hundreds of federally

registered trademarks using the word “virgin,” most of which had no

connection to the Virgin Group and many of which predated Virgin

Group’s assertion of broad trademark rights in the word.

Similarly, the use of the name Phones-R-Us by a business that sold

retail phones, accessories and answering machines was found “likely ‘to

cause confusion, or to cause mistake or to deceive’ consumers into believing

some sponsorship, association, affiliation, connection or endorsement

exists” between the toy store chain Toys “R” Us and the defendant.

While Toys “R” Us might now be able to reasonably assert dominion over

“Anything R Us” through a dilution claim under the FTDA, a likelihood

of confusion determination and subsequent infringement finding gave the

company de facto dilution protection and trademark rights in gross five

years before Congress authorized federal dilution causes of action.

rights in gross or at large. The law does not per se prohibit the use of trademarks or service marks as domain names. Rather, the law prohibits only uses that infringe or dilute an owner’s trademark or service mark.

Id.

165. This right is doctrinally available only to famous marks under dilution principles. See supra Part III.C.2.

166. Virgin Enters. Ltd. v. Virgin Petroleum, Inc., No. CV 99-12826, 2000 U.S. Dist. LEXIS 8100, at *1–2, *42 (C.D. Cal. Jan. 19, 2000).

167. A “TESS” query returned 320 trademarks using or referencing the word “virgin.” TESS, Free Form Search, at http://www.uspto.gov (last visited Oct. 23, 2003). 168. Geoffrey, Inc. v. Stratton, 16 U.S.P.Q.2d 1691, 1694 (C.D. Cal. 1990).

Mobil Oil Corporation was deemed to have confusion-rooted

trademark dominion over the word “mobile” in any automotive context,

even though mobility is a defining feature of automobiles, and mobile is

a descriptive term for movable goods and services. In Mobil Oil

Corporation v. Mobile Mechanics,

_{the court held:}

Here the marks are so similar that confusion is not only likely but practically inevitable. The mark “mobile” differs from “Mobil” only by the addition of one letter and by the absence of an initial capital. . . .

The minor variations defendants point out do not sufficiently differentiate their name from plaintiff’s mark. The fact that they make the letter “o” larger than the other letters and accent it with a gear or wheel design if anything increases the likelihood of confusion.170

Rather than requiring Mobil Oil Corporation to prove likelihood of

confusion between a large, well-known petroleum company and a small

start up mobile auto repair service, this court opined that: “It was

defendants’ obligation to avoid confusion and it remains defendants’

burden as subsequent user to demonstrate that confusion is not likely to

result.”