JON O. NEWMAN, Chief Judge:
This appeal in a trademark case presents a rarely litigated issue likely
to recur with increasing frequency in this era of head-to-head comparative
advertising. The precise issue, arising under the New York anti-dilution
statute, N.Y.Gen.Bus.Law s 368-d (McKinney 1984), is whether an advertiser
may depict an altered form of a competitor's trademark to identify the competitor's
product in a comparative ad. The issue arises on an appeal by defendant-appellant
MTD Products, Inc. ("MTD") from the August 9, 1994, order of the
United States District Court for the Southern District of New York (Lawrence
M. McKenna, Judge) granting a preliminary injunction to plaintiff- appellee
Deere & Company ("Deere") and Deere's cross-appeal to broaden
the scope of the injunction beyond New York State, 860 F.Supp. 113. The
injunction prevents MTD from airing a television commercial that shows an
animated version of the leaping deer that has become appellee's well-known
logo.
Although a number of dilution cases in this Circuit have involved use of
a trademark by a competitor to identify a competitor's products in comparative
advertising,(n1)
as well as use by a noncompetitor in a humorous variation of a trademark,(n2) we have not yet
considered whether the use of an altered version of a distinctive trademark
to identify a competitor's product and achieve a humorous effect can constitute
trademark dilution. Though we find MTD's animated version of Deere's deer
amusing, we agree with Judge McKenna that the television commercial is a
likely violation of the anti- dilution statute. We therefore affirm the
preliminary injunction.
Deere, a Delaware corporation with its principal place of business in
Illinois, is the world's largest supplier of agricultural equipment. For
over one hundred years, Deere has used a deer design ("Deere Logo")
as a trademark for identifying its products and services. Deere owns numerous
trademark registrations for different versions of the Deere Logo. Although
these versions vary slightly, all depict a static, two-dimensional silhouette
of a leaping male deer in profile. The Deere Logo is widely recognizable
and a valuable business asset.(n3)
MTD, an Ohio company with its principal place of business in Ohio, manufactures
and sells lawn tractors. In 1993, W.B. Doner & Company ("Doner"),
MTD's advertising agency, decided to create and produce a commercial--the
subject of this litigation--that would use the Deere Logo, without Deere's
authorization, for the purpose of comparing Deere's line of lawn tractors
to MTD's "Yard-Man" tractor. The intent was to identify Deere
as the market leader and convey the message that Yard-Man was of comparable
quality but less costly than a Deere lawn tractor.
Doner altered the Deere Logo in several respects. For example, as Judge
McKenna found, the deer in the MTD version of the logo ("Commercial
Logo") is "somewhat differently proportioned, particularly with
respect to its width, than the deer in the Deere Logo." Doner also
removed the name "John Deere" from the version of the logo used
by Deere on the front of its lawn tractors, and made the logo frame more
sharply rectangular.
More significantly, the deer in the Commercial Logo is animated and assumes
various poses. Specifically, the MTD deer looks over its shoulder, jumps
through the logo frame (which breaks into pieces and tumbles to the ground),
hops to a pinging noise, and, as a two-dimensional cartoon, runs, in apparent
fear, as it is pursued by the Yard-Man lawn tractor and a barking dog. Judge
McKenna described the dog as "recognizable as a breed that is short
in stature," and in the commercial the fleeing deer appears to be even
smaller than the dog. Doner's interoffice documents reflect that the animated
deer in the commercial was intended to appear "more playful and/or
confused than distressed."
MTD submitted the commercial to ABC, NBC, and CBS for clearance prior to
airing, together with substantiation of the various claims made regarding
the Yard-Man lawn tractor's quality and cost relative to the corresponding
Deere model. Each network ultimately approved the commercial, though ABC
reserved the right to re-evaluate it "should there be [a] responsible
complaint," and CBS demanded and received a letter of indemnity from
Doner. The commercial ran from the week of March 7, 1994, through the week
of May 23, 1994.
Deere filed a complaint, along with an order to show cause seeking a preliminary
injunction and a temporary restraining order, alleging violations of the
New York anti-dilution statute and section 43(a) of the Lanham Act, 15 U.S.C.
s 1125(a) (1988), as well as common law claims of unfair competition and
unjust enrichment. Following a hearing, the District Court denied Deere's
application for a temporary restraining order, but subsequently found that
Deere had demonstrated a likelihood of prevailing on its dilution claim
and granted preliminary injunctive relief limited to activities within New
York State. In its August 11, 1994, Supplemental Findings of Fact, Conclusions
of Law, and Order ("Supplemental Order"), the Court concluded
that Deere had not shown a likelihood of success on the merits of its Lanham
Act claim. (n4)
On appeal, MTD argues that the anti-dilution statute does not prohibit commercial
uses of a trademark that do not confuse consumers or result in a loss of
the trademark's ability to identify a single manufacturer, or tarnish the
trademark's positive connotations. Deere cross-appeals, contending that
injunctive relief should not have been limited to New York State. We affirm
both the finding of likely dilution and the scope of the injunction.(n5)
Section 368-d, which has counterparts in more than twenty states, reads
as follows: Likelihood of injury to business reputation or of dilution of
the distinctive quality of a mark or trade name shall be a ground for injunctive
relief in cases of infringement of a mark registered or not registered or
in cases of unfair competition, notwithstanding the absence of competition
between the parties or the absence of confusion as to the source of goods
or services. N.Y.Gen.Bus.Law s 368-d (McKinney 1984). The anti-dilution
statute applies to competitors as well as noncompetitors, see Nikon Inc.
v. Ikon Corp., 987 F.2d 91, 96 (2d Cir.1993), and explicitly does not require
a plaintiff to demonstrate a likelihood of consumer confusion, see Sally
Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621, 624 (2d Cir.1983).
In order to prevail on a section 368-d dilution claim, a plaintiff must
prove, first, that its trademark either is of truly distinctive quality
or has acquired secondary meaning, and, second, that there is a "likelihood
of dilution." Sally Gee, 699 F.2d at 625. A third consideration, the
predatory intent of the defendant, may not be precisely an element of the
violation, but, as we discuss below, is of significance, especially in a
case such as this, which involves poking fun at a competitor's trademark.
MTD does not dispute that the Deere Logo is a distinctive trademark that
is capable of dilution and has acquired the requisite secondary meaning
in the marketplace. See Allied Maintenance Corp. v. Allied Mechanical Trades,
Inc., 42 N.Y.2d 538, 545, 399 N.Y.S.2d 628, 632, 369 N.E.2d 1162, 1166 (1977).
Therefore, the primary question on appeal is whether Deere can establish
a likelihood of dilution of this distinctive mark under section 368-d.
Likelihood of Dilution. Traditionally, this Court has defined dilution under
section 368-d "as either the blurring of a mark's product identification
or the tarnishment of the affirmative associations a mark has come to convey."
See Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d
1026, 1031 (2d Cir.1989) (citing Sally Gee, 699 F.2d at 625 (quoting 3 R.
Callman, The Law of Unfair Competition, Trademarks and Monopolies s 84.2,
at 954-55)).
In previous cases, "blurring" has typically involved "the
whittling away of an established trademark's selling power through its unauthorized
use by others upon dissimilar products." Mead Data, 875 F.2d at 1031
(describing such " 'hypothetical anomalies' as 'DuPont shoes, Buick
aspirin tablets, Schlitz varnish, Kodak pianos, Bulova gowns, and so forth'
") (quoting legislative history of section 368-d) (citation omitted).
Thus, dilution by "blurring" may occur where the defendant uses
or modifies the plaintiff's trademark to identify the defendant's goods
and services, raising the possibility that the mark will lose its ability
to serve as a unique identifier of the plaintiff's product.(n6)
"Tarnishment" generally arises when the plaintiff's trademark
is linked to products of shoddy quality, or is portrayed in an unwholesome
or unsavory context likely to evoke unflattering thoughts about the owner's
product.(n7) In
such situations, the trademark's reputation and commercial value might be
diminished because the public will associate the lack of quality or lack
of prestige in the defendant's goods with the plaintiff's unrelated goods,
or because the defendant's use reduces the trademark's reputation and standing
in the eyes of consumers as a wholesome identifier of the owner's products
or services.
At the hearing on Deere's application for a temporary restraining order,
the District Court initially suggested that there was neither blurring nor
tarnishment as those terms have been used, and consequently no dilution
of the Deere Logo. The Court observed that MTD's commercial "makes
it clear that Deere is a distinct product coming from a different source
than Yard-Man," and does not "bring the plaintiff's mark into
disrepute." However, in its preliminary injunction ruling, the Court
found that Deere would probably be able to establish a likelihood of dilution
by blurring under section 368-d; tarnishment was not discussed.
The District Court noted that "the instant case [wa]s one of first
impression" because it involved a defendant's use of a competitor's
trademark to refer to the competitor's products rather than to identify
the defendant's products. For this reason, the traditional six-factor test
for determining whether there has been dilution through blurring of a trademark's
product identification was not fully applicable.(n8)
Focusing only on the alteration of the static Deere Logo resulting from
MTD's animation, the Court concluded that MTD's version constituted dilution
because it was likely to diminish the strength of identification between
the original Deere symbol and Deere products,(n9)
and to blur the distinction between the Deere Logo and other deer logos
in the marketplace, including those in the insurance and financial markets.
Although we agree with the District Court's finding of a likelihood of dilution,
we believe that MTD's commercial does not fit within the concept of "blurring,"
but, as we explain below, nonetheless constitutes dilution.
The District Court's analysis endeavored to fit the MTD commercial into
one of the two categories we have recognized for a section 368-d claim.
However, the MTD commercial is not really a typical instance of blurring,
see, e.g., Toys "R" Us, Inc. v. Canarsie Kiddie Shop, Inc., 559
F.Supp. 1189, 1208 (E.D.N.Y.1983) (finding blurring of "Toys 'R' Us"
mark by "Kids 'r' Us" mark), because it poses slight if any risk
of impairing the identification of Deere's mark with its products. Nor is
there tarnishment, which is usually found where a distinctive mark is depicted
in a context of sexual activity, obscenity, or illegal activity. See, e.g.,
Coca-Cola, 346 F.Supp. at 1191 (relying on dilution by tarnishment as alternative
basis for issuance of preliminary injunction against defendant's "Enjoy
Cocaine" poster); Pillsbury Co. v. Milky Way Productions, Inc., 215
U.S.P.Q. 124, 135 (N.D.Ga.1981) (concluding that defendant's sexually-oriented
variation tarnished plaintiff's mark). But the blurring/tarnishment dichotomy
does not necessarily represent the full range of uses that can dilute a
mark under New York law. See Allied Maintenance, 42 N.Y.2d at 545, 399 N.Y.S.2d
at 632, 369 N.E.2d at 1166 (defining dilution simply as "the gradual
whittling away of a firm's distinctive trade-mark or name"); Shadow
Box, Inc. v. Drecq, 71 Misc.2d 733, 734, 336 N.Y.S.2d 801, 802 (N.Y.Sup.Ct.1972)
(stating that section 368- d "protects ... against any use of the symbol
that may drain off any of the potency of the mark").
In giving content to dilution beyond the categories of blurring or tarnishment,
however, we must be careful not to broaden section 368-d to prohibit all
uses of a distinctive mark that the owner prefers not be made. Several different
contexts may conveniently be identified. Sellers of commercial products
may wish to use a competitor's mark to identify the competitor's product
in comparative advertisements. See, e.g., R.G. Smith v. Chanel, Inc., 402
F.2d 562, 567 (9th Cir.1968) (perfume manufacturer used competitor's mark
in comparative advertisements; injunction denied). As long as the mark is
not altered, such use serves the beneficial purpose of imparting factual
information about the relative merits of competing products and poses no
risk of diluting the selling power of the competitor's mark. Satirists,
selling no product other than the publication that contains their expression,
may wish to parody a mark to make a point of social commentary, see, e.g.,
Stop the Olympic Prison v. United States Olympic Committee, 489 F.Supp.
1112, 1123 (S.D.N.Y.1980) (poster used defendant's trademark to criticize
trademark owner's involvement with proposed prison; injunction denied),
to entertain, see, e.g., L.L. Bean v. Drake Publishers, Inc., 811 F.2d 26
(1st Cir.) (satiric magazine parodying L.L. Bean catalogue; injunction denied),
cert. denied, 483 U.S. 1013, 107 S.Ct. 3254, 97 L.Ed.2d 753 (1987), or perhaps
both to comment and entertain, see, e.g., Girl Scouts of USA v. Personality
Posters Manufacturing Co., 304 F.Supp. 1228, 1233 (S.D.N.Y.1969) (poster
depicting pregnant Girl Scout to suggest humorously that trademark owner's
traditional image of chastity and wholesomeness was somewhat illusory; injunction
denied). Such uses risk some dilution of the identifying or selling power
of the mark, but that risk is generally tolerated in the interest of maintaining
broad opportunities for expression. Cf. Rogers v. Grimaldi, 875 F.2d 994,
1000 (2d Cir.1989) (risk that film title might mislead and violate Lanham
Act outweighed by danger of restricting artistic expression).
Sellers of commercial products who wish to attract attention to their commercials
or products and thereby increase sales by poking fun at widely recognized
marks of noncompeting products, see, e.g., Eveready Battery Co., Inc. v.
Adolph Coors Co., 765 F.Supp. 440 (N.D.Ill.1991) (beer manufacturer spoofed
Energizer Bunny trademark; preliminary injunction under Lanham Act and state
dilution statute denied), risk diluting the selling power of the mark that
is made fun of. When this occurs, not for worthy purposes of expression,
but simply to sell products, that purpose can easily be achieved in other
ways. The potentially diluting effect is even less deserving of protection
when the object of the joke is the mark of a directly competing product.
See, e.g., Wendy's International, Inc. v. Big Bite, Inc., 576 F.Supp. 816
(S.D.Ohio 1983) ("fast-food" chain made fun of "fast-food"
competitors' trademarks; preliminary injunction granted under Lanham Act).
The line-drawing in this area becomes especially difficult when a mark is
parodied for the dual purposes of making a satiric comment and selling a
somewhat competing product. See, e.g., Yankee Publishing Inc. v. News America
Publishing Inc., 809 F.Supp. 267 (S.D.N.Y.1992) (magazine satirized another
magazine; injunction denied).
Whether the use of the mark is to identify a competing product in an informative
comparative ad, to make a comment, or to spoof the mark to enliven the advertisement
for a noncompeting or a competing product, the scope of protection under
a dilution statute must take into account the degree to which the mark is
altered and the nature of the alteration. Not every alteration will constitute
dilution, and more leeway for alterations is appropriate in the context
of satiric expression and humorous ads for noncompeting products. But some
alterations have the potential to so lessen the selling power of a distinctive
mark that they are appropriately proscribed by a dilution statute. Dilution
of this sort is more likely to be found when the alterations are made by
a competitor with both an incentive to diminish the favorable attributes
of the mark and an ample opportunity to promote its products in ways that
make no significant alteration.
We need not attempt to predict how New York will delineate the scope of
its dilution statute in all of the various contexts in which an accurate
depiction of a distinctive mark might be used, nor need we decide how variations
of such a mark should be treated in different contexts. Some variations
might well be de minimis, and the context in which even substantial variations
occur may well have such meritorious purposes that any diminution in the
identifying and selling power of the mark need not be condemned as dilution.
Wherever New York will ultimately draw the line, we can be reasonably confident
that the MTD commercial challenged in this case crosses it. The commercial
takes a static image of a graceful, full-size deer--symbolizing Deere's
substance and strength--and portrays, in an animated version, a deer that
appears smaller than a small dog and scampers away from the dog and a lawn
tractor, looking over its shoulder in apparent fear. Alterations of that
sort, accomplished for the sole purpose of promoting a competing product,
are properly found to be within New York's concept of dilution because they
risk the possibility that consumers will come to attribute unfavorable characteristics
to a mark and ultimately associate the mark with inferior goods and services.
See Merriam-Webster, Inc. v. Random House, Inc., 35 F.3d 65, 73 (2d Cir.1994)
(injunction under section 368-d appropriate where there is likelihood that
distinctive trademark will be " 'weakened, blurred or diluted' "
in its value or quality) (quoting Miss Universe, Inc. v. Patricelli, 753
F.2d 235, 238 (2d Cir.1985)); Sally Gee, 699 F.2d at 624- 25 ("The
interest protected by s 368-d is not simply commercial goodwill, but the
selling power that a distinctive mark or name with favorable associations
has engendered for a product in the mind of the consuming public.").
Significantly, the District Court did not enjoin accurate reproduction of
the Deere Logo to identify Deere products in comparative advertisements.
MTD remains free to deliver its message of alleged product superiority without
altering and thereby diluting Deere's trademarks. The Court's order imposes
no restriction on truthful advertising properly comparing specific products
and their "objectively measurable attributes." FTC Policy Statement
on Comparative Advertising, 16 C.F.R. s 14.15 n. 1 (1993). In view of this,
the District Court's finding of a likelihood of dilution was entirely appropriate,
notwithstanding the fact that MTD's humorous depiction of the deer occurred
in the context of a comparative advertisement.
Predatory Intent. The District Court recognized that we have not been authoritatively
advised by New York courts nor have we made a clear-cut prediction as to
whether "a showing of predatory intent is required for, or merely relevant
to, a finding that the anti-dilution statute has been violated." Indeed,
New York law has not authoritatively clarified what "predatory intent"
means in the context of an anti-dilution claim. In W.W.W. Pharmaceutical
Co., Inc. v. Gillette Co., 984 F.2d 567, 576-77 (2d Cir.1993), we characterized
predatory intent as an element of a dilution claim, but we have more often
referred to it as merely a factor relevant to a determination of dilution,
see Merriam-Webster, 35 F.3d at 73; Sally Gee, 699 F.2d at 626; see also
Mead Data, 875 F.2d at 1037 (Sweet, J., concurring).
Until New York courts clarify the relevance of intent under section 368-d,
we prefer to proceed cautiously, eschewing definitive statements that endeavor
to characterize a subjective element appropriate for all contexts.(n10) In the context of
trademark parody or alteration, a modest version of subjective intent can
helpfully distinguish uses of trademarks that endeavor to sell products
from uses that seek to make a social or political commentary or an artistic
expression. To serve this purpose, all that is needed is an intent to promote
one's product. As the District Court found, at least such intent was clearly
present in this case.
Scope of Injunction. Finally, turning to Deere's objection to the geographic
scope of the injunction, we conclude that the District Court did not exceed
its discretion in limiting the scope of relief to New York State. See Nikon,
987 F.2d at 94 (scope of injunction reviewed for abuse of discretion).
Although the record does not clearly reflect the reasons for the limitation,
the District Court observed that "the same considerations that led
[it] to limit the injunctive relief for the violation of the New York anti-dilution
statute to activities originating or having an effect within the boundaries
of the State of New York likewise would apply to injunctive relief granted
pursuant to Deere's common law claims of unfair competition and unjust enrichment."
It is thus clear that the District Court believed it had the power to grant
broader injunctive relief but declined to exercise it. In view of the novelty
of the issues raised, we cannot say that limiting interim relief to conduct
in New York State was beyond "the range of [the District Court's] decision-making
authority," Stormy Clime Ltd. v. ProGroup, Inc., 809 F.2d 971, 974
(2d Cir.1987), notwithstanding the fact that district courts have in other
circumstances granted nationwide injunctive relief on trademark dilution
claims. See, e.g., Stern's Miracle-Gro Products, Inc. v. Shark Products,
Inc., 823 F.Supp. 1077, 1095-96 (S.D.N.Y.1993); Instrumentalist Co. v. Marine
Corps League, 509 F.Supp. 323, 340 (N.D.Ill.1981), aff'd, 694 F.2d 145 (7th
Cir.1982).
Although it is well established that an advertiser may use a competitor's
trademark for the purpose of comparing its products directly to those of
the competitor, no uniform rule exists where, as here, the comparative advertiser
not only uses the competitor's mark but alters it. The District Court correctly
perceived the instant case to be one of "first impression," particularly
because MTD's commercial creates a likelihood of dilution involving neither
"blurring" nor "tarnishing" as those terms have generally
been understood.
Moreover, a number of states do not have anti-dilution laws, and even those
states with such laws or similar causes of action might not restrict commercial
use of trademarks that do not confuse consumers or blur or tarnish the trademark.
Cf. Rosemont Enterprises, Inc. v. Urban Systems, Inc., 42 A.D.2d 544, 345
N.Y.S.2d 17, 18 (1973) (restricting injunction to New York because "[i]n
other jurisdictions ..., the law with respect to the right of privacy could
have other efficacy with respect to a public figure ... both in common-law
interpretation and in statutes").(n11)
Particularly at this early stage in the litigation, where the relief is
preliminary, it was proper for the District Court to restrict the reach
of the injunction. See Blue Ribbon Feed Co. v. Farmers Union Central Exchange,
Inc., 731 F.2d 415, 422 (7th Cir.1984) (recognizing that "considerations
of comity among the states favor limited out-of-state application of exclusive
rights acquired under domestic law, and a district court does not err when
it takes a restrained approach to the extra-territorial application of such
rights"). Accordingly, we do not disturb the geographic limitation.
The order of the District Court granting a preliminary injunction as
to activities within New York State is affirmed.
FOOTNOTES:
1. See, e.g., Diversified Marketing, Inc. v.
Estee Lauder, Inc., 705 F.Supp. 128 (S.D.N.Y.1988) (no dilution under section
368-d where defendant used name for comparison purposes with advertising
slogan, "If You Like Estee Lauder ... You'll Love Beauty USA").
2. See, e.g., McDonald's
Corp. v. McBagel's, Inc., 649 F.Supp. 1268 (S.D.N.Y.1986) (take-off on McDonald's
trade-name); Universal City Studios, Inc. v. T-Shirt Gallery, Ltd., 634
F.Supp. 1468 (S.D.N.Y.1986) (T- shirt picturing "Miami Mice" poked
fun at plaintiff's "Miami Vice" trademark); Coca-Cola Co. v. Gemini
Rising, Inc., 346 F.Supp. 1183 (E.D.N.Y.1972) ("Enjoy Cocaine"
poster making fun of Coca-Cola trademark).
3. Deere's net sales
of equipment bearing the Deere Logo for the fiscal year 1993 exceeded $6.4
billion, and Deere contends that revenues from its financial services and
insurance operations, which also utilize the Deere Logo, exceeded $1.1 billion.
Deere has spent a substantial amount of money using the Deere Logo to advertise
its products and services.
4. The Lanham Act
requires a showing that "the challenged advertisement is literally
false" or that it is "likely to mislead or confuse consumers."
Johnson & Johnson * Merck Consumer Pharmaceuticals Co. v. Smithkline
Beecham Corp., 960 F.2d 294, 297 (2d Cir.1992). Deere conducted a consumer
survey to show the degree of confusion among viewers as to, among other
things, the source of the MTD commercial, but the District Court was not
sufficiently persuaded by the results to issue an injunction on this claim.
5. Because we agree
with the District Court that the considerations supporting a geographic
limitation would apply with equal force to Deere's common law causes of
action for unfair competition by misappropriation and unjust enrichment,
we do not consider those claims. Deere does not challenge the Court's Lanham
Act ruling in its briefs on appeal. The commercial does not appear to be
misleading or confusing as to sponsorship, and is in any event not so misleading
or confusing as to warrant preliminary injunctive relief as a matter of
law. Accordingly, we confine our analysis to the question of dilution under
the New York statute.
6. See, e.g., Jordache
Enterprises, Inc. v. Levi Strauss & Co., 841 F.Supp. 506 (S.D.N.Y.1993)
(Jordache used Levi's mark to identify Jordache's product); Dreyfus Fund,
Inc. v. Royal Bank of Canada, 525 F.Supp. 1108 (S.D.N.Y.1981) (defendant
used version of plaintiff's lion trademark to advertise defendant's products).
7. See, e.g., Coca-Cola
Co., 346 F.Supp. at 1183 (defendant sold posters reading "Enjoy Cocaine"
in script and color identical to that used for Coca-Cola trademark); Academy
of Motion Picture Arts and Sciences v. Creative House Promotions, Inc.,
944 F.2d 1446, 1457 (9th Cir.1991) (finding dilution because "[i]f
the Star Award looks cheap or shoddy, ... the Oscar's distinctive quality
as a coveted symbol of excellence ... is threatened"); Chemical Corp.
of America v. Anheuser- Busch, Inc., 306 F.2d 433 (5th Cir.1962) (defendant
adapted plaintiff's slogan, "Where there's life ... there's Bud,"
for its insecticide slogan, "Where there's life ... there's bugs"),
cert. denied, 372 U.S. 965, 83 S.Ct. 1089, 10 L.Ed.2d 129 (1963).
8. See Mead Data,
875 F.2d at 1035 (Sweet, J., concurring) (suggesting that courts evaluating
blurring claims look at (1) similarity of the marks, (2) similarity of the
products covered by the marks, (3) sophistication of consumers, (4) predatory
intent, (5) renown of the senior mark, and (6) renown of the junior mark).
9. To support its
argument that animation does not weaken or dilute a trademark, MTD pointed
to examples of entities animating their own trademarks. Indeed, at one point
Deere had considered and rejected the possibility of animating its logo.
But, as the District Court observed, for purposes of trademark law, "there
is a vast difference between the holder of a trademark animating its own
static mark and a competitor animating the holder's mark without the owner's
permission."
10. As the District
Court noted, our characterization of "predatory intent" as an
"element" of an anti-dilution claim in W.W.W. Pharmaceutical,
984 F.2d at 576-77, may have resulted from an overreading of our prior decision
in Sally Gee by the one authority, Lobo Entertainments, Inc. v. Tunnel,
Inc., 693 F.Supp. 71 (S.D.N.Y.1988), relied on in W.W.W. Pharmaceutical
for this proposition. Sally Gee had not identified "predatory intent"
as an "element" of an anti-dilution claim, as Lobo had indicated,
693 F.Supp. at 79, but had said only that "the absence of predatory
intent" was a "relevant factor" in assessing an anti- dilution
claim. 699 F.2d at 626.
11. Additionally,
at least one state does not apply its anti-dilution law to competitors.
See, e.g., AHP Subsidiary Holding Co. v. Stuart Hale Co., 1 F.3d 611, 619
(7th Cir.1993) (Illinois).