Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Development

Decision Date16 March 1999
Docket NumberNo. 97-1399,97-1399
Citation50 USPQ2d 1065,170 F.3d 449
CourtU.S. Court of Appeals — Fourth Circuit
PartiesRINGLING BROS.-BARNUM & BAILEY COMBINED SHOWS, INCORPORATED, Plaintiff-Appellant, v. UTAH DIVISION OF TRAVEL DEVELOPMENT, Defendant-Appellee.

ARGUED: Steven B. Pokotilow, Stroock & Stroock & Lavan, L.L.P., New York, New York, for Appellant. Ralph L. Finlayson, Office of the Utah Attorney General, Salt Lake City, Utah, for Appellee. ON BRIEF Brian S. Tomko, Stroock & Stroock & Lavan, L.L.P., New York, New York; Stephen M. Colangelo, McGuire, Woods, Battle & Boothe, L.L.P., Tysons Corner, Virginia, for Appellant. Jerrold S. Jensen, Office of the Utah Attorney General, Salt Lake City, Utah, for Appellee.

Before WILKINS, Circuit Judge, PHILLIPS, Senior Circuit Judge, and THORNBURG, United States District Judge for the Western District of North Carolina, sitting by designation.

Affirmed by published opinion. Senior Judge PHILLIPS wrote the opinion, in which Judge WILKINS and Judge THORNBURG joined.

OPINION

PHILLIPS, Senior Circuit Judge:

This case requires us to interpret and apply the dauntingly elusive concept of trademark "dilution" as now embodied in the Federal Trademark Dilution Act of 1995 ("the Act"). See Federal Trademark Dilution Act of 1995, Pub.L. No. 104-98, 109 Stat. 985 (codified at 15 U.S.C. §§ 1125, 1127). The concept was invoked in this case by Ringling Bros.-Barnum & Bailey Combined Shows, Inc. ("Ringling") in a claim under the Act that Ringling's "famous" circus trademarks logan, THE GREATEST SHOW ON EARTH ("GREATEST SHOW mark"), had been diluted by the State of Utah's commercial use of its trademark slogan, THE GREATEST SNOW ON EARTH ("GREATEST SNOW mark"), as an advertisement of the state's winter sports attractions. The district court found that Ringling had not proved dilution under the Act and gave judgment for Utah. We affirm the judgment.

I

The relevant background facts as found by the district court are undisputed. From 1872 to the present, Ringling and its predecessors have offered their circus to the public as the "Greatest Show on Earth." In 1961, Ringling received federal trademark registration for its GREATEST SHOW mark for entertainment services in the nature of a circus.

Since its inception, Ringling has used its mark to advertise circus performances. The circus travels throughout the United States and presents approximately 1,000 shows annually to some 12 million people in 95 cities. More than 70 million people each year are exposed to the GREATEST SHOW mark in connection with the circus. Revenues derived from goods and services bearing or using the mark are substantial and exceeded $103 million for the fiscal year ending January, 1997.

Ringling advertises its circus using the GREATEST SHOW mark in print advertising, radio, television, videos, outdoor billboards, direct-mail pieces, press announcements, posters, program books, souvenirs, and joint promotions with other companies. In the fiscal year ending January 1997, expenditures on advertising using the mark totaled approximately $19 million. Through joint promotions with retailers, Ringling obtains significant additional exposure for its mark. Also, because of its renown, the GREATEST SHOW mark receives substantial free publicity.

Defendant Utah Division of Travel Development ("Utah") is an agency of the State of Utah. As early as 1962, Utah began using its GREATEST SNOW mark in connection with Utah tourism services. Utah has used its mark in magazine advertisements every year from 1962 to the present except 1963, 1977, and 1989. Utah has authorized the Utah Ski Association to use the GREATEST SNOW mark in connection with the Association's promotion of Utah tourism. Utah's primary use of its mark in Utah is its display on motor vehicle license plates. For each of the past fifteen years, Utah's budget for winter advertising, including advertising of the GREATEST SNOW mark, has ranged from $300,000 to $450,000.

In 1965, the Utah Attorney General opined that Utah's mark did not impair or violate Ringling's GREATEST SHOW mark. Utah registered its mark with the State of Utah in 1975 and renewed its registration in 1985 and 1995. In 1988, Utah applied to the United States Patent and Trademark Office to register its mark. Although Ringling opposed Utah's application, Utah was granted federal registration for its mark on January 21, 1997.

On June 6, 1996, Ringling commenced this action, seeking injunctive and monetary relief, on allegations that Utah's use of the GREATEST SNOW mark "diluted" Ringling's GREATEST SHOW mark in violation of the Act. Before trial, the district court granted Utah's motion to strike Ringling's demand for a jury trial, and after a bench trial, found for Utah.

This appeal by Ringling followed. Before us, Ringling challenges the district court's determination on the merits that Utah's mark did not dilute Ringling's mark in violation of the Act, and the court's denial of its demand for jury trial. We take these in turn.

II

The Federal Trademark Dilution Act, which became effective on January 16, 1996, amended Section 43 of the Lanham Act to provide a new cause of action for federal trademark "dilution." Under the Act, the owner of a "famous mark" is given protection "against another person's commercial use ... of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark." 15 U.S.C. § 1125(c)(1). A successful claimant may be given injunctive and, if a willful violation is proved, restitutionary, compensatory, and specific relief in the form of a destruction of offending articles. See id. §§ 1125(c)(1)-(2), 1117(a),1118.

The Act defines dilution as:

the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of--

(1) competition between the owner of the famous mark and other parties, or

(2) likelihood of confusion, mistake, or deception.

Id. § 1127.

And, the Act's legislative history further indicates that Congress understood that "dilution" might result either from "uses that blur the distinctiveness of [a famous] mark or [that] tarnish or disparage it." See H.R.Rep. No. 104-374, at 2 (1995), U.S. Code Cong. & Admin. News at 1029, 1029. The parties here both accept this as a proper reflection of congressional intent respecting the meaning of "dilution," and further agree that only dilution by blurring is at issue in this case. 1

To prove its statutory dilution claim, Ringling's burden therefore was to prove (1) that its mark was a "famous" one; (2) that Utah adopted its mark after Ringling's had become famous; and (3) that Utah's mark diluted Ringling's by "blurring" it. See id. §§ 1125(c)(1), 1127.

At trial, Ringling put on essentially undisputed evidence demonstrating that its mark had achieved "famous" status before Utah began use of its mark. This left as the dispositive issue whether Utah's mark had "diluted" Ringling's by "blurring" it. On that issue, Ringling took the position that as a matter of statutory interpretation, "dilution" by "blurring" occurs whenever a junior mark is either identical to or sufficiently similar to the famous mark that persons viewing the two instinctively will make a "mental association" between the two. (Appellant's Br. at 9.) On this interpretation, viewers' knowledge of the goods or services represented by the two marks is irrelevant; all that counts is the identity or sufficient similarity of the marks as perceived by the viewer. Taking this as the legal meaning of "dilution by blurring," Ringling then contended that, though not identical, the similarity between Ringling's and Utah's marks was so strong and obvious that the required "mental association" of the two, hence the dilution by blurring of Ringling's senior mark, was evident as a matter of law, no other evidence being required to establish it. But, in a back-up position, Ringling presented evidence of a survey of hypothetical viewers designed to demonstrate empirically that the two marks did evoke in a properly representative sampling of viewers the mental association of the two that sufficed alone to prove a dilution violation.

In a comprehensive opinion, see Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 955 F.Supp. 605 (E.D.Va.1997), the district court rejected Ringling's critical legal contentions respecting the legal meaning of "dilution" as used in the Act and found its attempted factual proof of dilution by means of a viewer survey insufficient to establish a violation.

Specifically, the court rejected Ringling's contention that proof alone of an "instinctive mental association" of the two marks by viewers sufficed to prove "dilution." While recognizing that to prove dilution by blurring one must necessarily prove as a threshold element a mental association by viewers of the marks themselves, the court held that this alone did not suffice. Rather, the court held, dilution by blurring occurs only where consumers "mistakenly associate or confuse the marks and the goods or services they seek to identify and distinguish," and this association causes actual harm to the senior mark's capacity to "identify and distinguish." Id. at 615-16. Applying this interpretation of "dilution" to Ringling's consumer survey evidence, the court found that the attempted proof by this means failed. See id. at 616-18. And, finally, analyzing the evidence as a whole under a multi-factor balancing test proposed for the purpose in Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026, 1035 (2d Cir.1989) (Sweet, J., concurring), the court concluded that "dilution" had not been established on a balancing of those factors. See id. at 618-22.

On this appeal, Ringling challenges both the district court's interpretation of the statutory meaning of "dilution"; the...

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