The United States Trademark Trial and Appeal Board (TTAB) recently heard Toro Company v. ToroHead, Inc., its first case involving dilution claims in an opposition proceeding. In this citable decision, the TTAB presented the standards by which dilution may serve as a basis for challenging an application or registration in proceedings before the Board.

The Opposition
Toro Company owns numerous registrations for lawn mowers, irrigation systems, trimmers, and the like. ToroHead filed an application to register ToroMR and a design of a bull’s head for magnetic reading and writing heads for computers. Toro Company opposed ToroHead’s application based on dilution of Toro’s marks.

What is Dilution?
Dilution has been a federal cause of action for owners of famous marks since enactment of The Federal Trademark Dilution Act of 1995 (FTDA). The FTDA defines dilution as the "lessening of the capacity of a famous mark to identify and distinguish goods or services" regardless of (a) competition between the owner of the famous mark and the other parties, or (b) likelihood of confusion, mistake, or deception.

In a federal court proceeding, in order for an owner of an allegedly famous mark to prove its claim of dilution, it must provide sufficient evidence that (1) the other party’s use is in commerce, (2) the other party adopted its mark after the plaintiff’s mark became famous, (3) the mark is famous (and, sometimes, whether the mark is distinctive, depending on the federal court), and (4) the other party diluted the mark.

Dilution in the TTAB
Dilution as a ground for opposition and cancellation proceedings in the TTAB became available when Congress enacted the Trademark Amendments Act of 1999. Since that time, the TTAB has issued a number of procedural opinions regarding dilution, but the Toro decision was the first to include a substantive decision. Since TTAB proceedings are not the same as federal court proceedings, the TTAB adopted its own factors based in part on the four (4) federal court factors.

The TTAB Factors
In the Toro case, the TTAB established the following factors:

Factor 1 — Use in Commerce Requirement: Since applications may be filed based on an "intent-to-use," the TTAB determined that an application based on an intent-to-use a mark satisfied the commerce requirement for proceedings before the Board.

Factor 2 — When Mark Became Famous: Similarly, the filing date of an intent-to-use application was determined to be the date upon which the opposer’s mark had to have already been famous.

Factor 3 — Fame and Distinctiveness: The Board adopted the Second Circuit’s requirement that the mark must be both famous and distinctive.

Factor 4 — Dilution of the Mark: The Board settled on three (3) factors to show likelihood of dilution: (a) similarity of the marks, (b) renown of the senior party, and (c) whether target customers are likely to associate two different products with the mark even if they are not confused as to the different origins of the products.

Result in the Toro Case
The Board held that there was not enough evidence to support a finding that the TORO marks are famous nor a finding that ToroHead’s mark would dilute Toro Company’s marks. Accordingly, the opposition was dismissed.