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| | :(8) whether the mark is registered. | | :(8) whether the mark is registered. |
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| − | "Xerox" was a classic, famous mark. | + | In ''Monster Energy Company v. Maple Leaf Sports & Entertainment Ltd. and NBA Properties, Inc.'', the Monster Energy drink company opposed the new registration of trademarks by the basketball entities because Monster Energy asserted that the basketball-related marks would dilute Monster Energy's trademark of vertical scratches for its "M". The applied-for trademarks of Maple Leaf Sports (Toronto Raptors) and the NBA feature a pattern of horizontal scratch marks. The basketball entities prevailed in this 7-year dispute before the [[TTAB]] because Monster Energy failed to prove that its trademark was sufficiently famous among the public, rather than famous merely among customers of Monster Energy drinks (it has 35% share of the energy drink market). Also, the TTAB held that basketball-entities' applied-for trademarks were not sufficiently similar to Monster Energy's trademark, and that people were not likely to confused to think that the basketball-related marks related to an energy drink sold by Monster Energy. |
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| − | But note that under state law a claim for dilution may be brought even if the mark is not famous. Dilution claims may be asserted under state law if:<ref>Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026 (2d Cir. 1989).</ref>
| + | "Xerox" was a classic, famous trademark. |
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| − | (1) the mark has a distinctive quality or "selling power"; and | + | But note that under state law a claim for dilution may be brought even if the mark is not famous. Dilution claims may be asserted under state law if:<ref>''Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc.'', 875 F.2d 1026 (2d Cir. 1989).</ref> |
| − | (2) there is substantial similarity between the two marks. | + | |
| | + | :(1) the mark has a distinctive quality or "selling power"; and |
| | + | :(2) there is substantial similarity between the two marks. |
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| | In contrast to a claim for infringement, the plaintiff need not assert likelihood of confusion, but need only demonstrate "blurring" or "tarnishment". | | In contrast to a claim for infringement, the plaintiff need not assert likelihood of confusion, but need only demonstrate "blurring" or "tarnishment". |