Niche Fame Not Enough for Dilution Claim to Survive Motion to Dismiss

A district court has discarded a Michigan company’s trademark dilution claim, emphasizing that niche fame is insufficient under the revised Trademark Dilution Act to survive a motion to dismiss.

Leapers, Inc., which is in the business of selling shooting, hunting, and outdoor gear, registered a trademark with the state of Michigan for the “scalloping design” of the adjustment knobs and bells of its rifle scopes. Leapers, Inc. v. SMTC, LLC, 14-cv-12290, 2014 WL 4964376 (E.D. Mich. Oct. 3, 2014). Leapers filed suit against defendants for false designation of origin, trade dress infringement, dilution, and various common law claims for allegedly advertising and selling products with Leapers’ mark without permission.

Defendants moved to dismiss the complaint for failure to state a claim. The court denied the motion except for Leapers’ dilution claim. The court explained that at most, Leapers might be able to establish that its design had niche fame within the firearms community. It was “implausible,” however, that Leapers could support its assertion that its design was widely recognized by the general consuming public.

“In evaluating fame, courts have deemed famous such well-known brands as Audi, Victoria's Secret, Nissan, Nike, Rolex, and Pepsi,” the court stated. “All of these brands are instantly recognizable nationwide by the population in general. In contrast, ‘niche fame’ is insufficient to obtain protection against trademark dilution.”

The court explained that the language “general consuming public,” which was added to 15 U.S.C. § 1125(c)(2)(A) in 2006, eliminated the possibility that niche fame was adequate for finding a mark famous. The court noted that other examples of non-famous marks include the Texas Longhorns logo, the red-dripping wax seal of Maker’s Mark whiskey bottles, and Quicken Loans.