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Misuse of A Trademark
Round II
In the December 1999 issue, I reported on a United
States District Court dismissal of the New York Stock Exchange's lawsuit against
New York, New York Hotel, a Las Vegas casino. The NYSE brought a number
of separate claims, for trademark infringement, dilution of trademarks, and
"tarnishing" its image under New York law.
The NYSE appealed from that decision and the Second
Circuit Court of Appeals has just given new life to two of the many claims brought.
The Appellate Court upheld dismissal of all of the
trademark infringement claims brought under the Federal Lanham Act, all but
one of the dilution claims under the Lanham Act, and the New York State law
blurring claim. It reversed and sent back to the trial court the New York
State claim for tarnishment of its trademark, and one specific dilution claim
based upon a registered trademark consisting of its architectural facade and
name.
The District Court had determined that the architectural
facade was not "distinctive" because many other well-known buildings,
including the United States Supreme Court, employed a similar design. The
Circuit Court disagreed, holding that there is no logical relationship between
the mark and the product on which it is used. In other words, "a
stock exchange can be housed in any of a variety of buildings, and the use of
a combination of particular architecture with the NYSE name might be found by
a trier of the facts to be arbitrary."
The garnishment dilution claim is where a trademark
"is portrayed in an unwholesome or unsavory content." In this
case the link is to gambling. The District Court had dismissed this claim
because the "NYSE had already associated itself with many other casinos
and gambling businesses by listing them on the exchange." The Circuit Court
said this analysis misses the point; such listings "relate solely to NYSE's
role as a pricing and financial monitory intermediary."
It is important to note that the Court has not decided
anything on the merits. It just determined that these two, of the many
claims asserted, can proceed to a trial.
We can now look forward to Round III.
For More You And the Law
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