A Tale of Two Casemates: Trademark Dispute over Wal-Mart’s Stationary Brand
Wal-Mart’s line of stationary items, Casemate, shares its name with a smartphone accessory company also named Case-Mate. Wal-Mart’s Casemate products include three-ring binders, folders, staplers, paperclips, and other office supplies. Case-Mate, Inc. sells fashionable protective cases for the latest smartphones. Despite the products’ differences, the mutual brand-name sparked a dispute between the two companies over trademark dilution.
Georgia based Case-Mate, Inc. filed a complaint with the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board, claiming the company did not want to be associated with Wal-Mart’s inferior goods. See Wal-Mart to Make Case in Court over Trademark, Arkansas Business, Aug. 22, 2016, at http://www.arkansasbusiness.com/article/112665/wal-mart-to-make-case-in-court-over-trademark. Wal-Mart filed suit in U.S. District Court in Fayetteville, Arkansas and stated that Case-Mate, Inc.’s claims are not motivated by fear of brand dilution but by Wal-Mart’s “deep pockets.” See Id.
Motivations aside, trademark dilution is a complicated and nuanced area of law. Federal law assigns trademark dilution into two categories: dilution by blurring and dilution by tarnishment. See 15 U.S.C.S. § 1125(c). Dilution by blurring is an “association arising from a similarity between a… trade name and a famous mark that impairs the distinctiveness of the famous mark.” Id. at § 1125(c)(2)(B). Dilution by tarnishment is similar to dilution by blurring, except that the similar trade name harms the reputation of the famous mark. Id. at § 1125(c)(2)(C).
Though the Federal statutes define what trademark dilution is the courts rely on multi-factor tests to determine the likelihood that dilution will occur. The likelihood of confusion between the two brand names is a legal determination based on the facts. Cunningham v. Laser Golf Corp., 222 F.3d 943, 945 (Fed. Cir. 2000). In re E. I. Du Pont de Nemours & Co., sets out thirteen factors for the courts to apply when establishing the likelihood of confusion. In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361 (Cust. & Pat. App 1973). Some of these factors are: the similarity of the marks as to appearance, sound, connotation, and commercial impression, the similarity or dissimilarity of the goods described, the fame of the mark, the nature and extent of actual confusion, the length of time during and conditions where there has been concurrent use without actual confusion, the variety of goods the mark is used on, the extent of potential confusion, etc. Id.
The gradations of similarities and potential for confusion hinge upon the facts each side will present. Though the products brand names are differentiated only by a hyphen, whether the courts will find trademark dilution actually occurred depends upon how the facts play out in the multi-factored test.