Recently, former NFL player, LeCharles Bentley’s claim for trademark dilution was dismissed in a lawsuit that he brought against NBC, among other defendants. This dispute revolves around Plaintiffs’ allegations that the Defendants are infringing upon the trademark LB by using a similar logo in connection with the reality television show, “The Biggest Loser.” This case was originally filed in Ohio but then was transferred to the Central District Court of California. The defendants then moved to dismiss Plaintiffs’ causes of action for trademark dilution and infringement.
In order to support a claim for trademark dilution, Plaintiffs would need to allege that the marks are distinctive and famous. The Court noted that the Plaintiffs alleged two different versions of the LB mark in their Complaint, namely a black and white version and a red version, and applied a presumption that such marks were distinctive. The Court then found that, despite the presumption of distinctiveness, the LB marks were descriptive because they were comprised of Plaintiff, LeCharles Bentley’s initials. This finding of descriptiveness put the burden on the Plaintiffs to show that the marks obtained enough consumer recognition to satisfy the requirement of secondary meaning. The Plaintiffs alleged that their LB marks are well known in the sports performance industry as a result of Plaintiffs’ use of the mark in commerce for several years, which the Court found to be sufficient to establish that the marks were distinctive. However, distinctiveness of a mark alone is not sufficient to support a trademark dilution claim as more is required to show that the mark is famous.
Since trademark dilution claims are meant only for a select class of marks that are considered famous, the test to determine fame is difficult to meet. The Court delineated a four factor test to determine fame, namely 1) the duration, extent and geographic reach of advertising of the mark; 2) the amount, volume and geographic extent of sales of goods and/or services offered under the mark; 3) the extent of actual recognition of the mark; and 4) whether the mark is registered. Marks that are considered famous are usually those that are widely recognized by the general public, and whose fame is recognized in more than just niche markets. The Court provided examples of marks that could be considered famous, namely BUDWEISER, CAMEL, and BARBIE. In this case, it was determined that the Plaintiffs’ marks were not sufficiently famous, as the Plaintiffs could only show that their marks were recognized among a limited segment of individuals, namely those interested in “football, sports performance, and fitness training.”
The results of this case show that not every trademark can be considered famous, even if federally registered. It is common practice for parties involved in litigation matters to allege that their trademarks are famous. However, the amount of trademarks that will end up being considered famous is limited. Please contact our office if you have any questions regarding the information in this article.
Daniel Devine, Esq.
Santucci Priore, P.L.
 See, LeCharles Bentley, et. al. v. NBC Universal, LLC, et. al., No. 16-cv-03693 TJH (KSx) at Docket Entry No. 63 (C.D. Cal. Sept. 28, 2016).