Intellectual Property Law

Failure to Allege Fame Results in Denial of Default Judgment in Dilution Case

By Michael Atkins

On Nov. 4, the Northern District of California provided a reminder that a dilution claim requires fame — on a nationwide basis. Failure to allege nationwide fame was sufficient reason for the court to deny the plaintiff’s motion for entry of default judgment in Corsair Memory, Inc. v. Corsair7.com.

Plaintiff sells high-performance computer components under its CORSAIR trademark.

Defendant Corsair7.com allegedly is an Internet domain name that was controlled by defendant Donju Son, who resides in Hong Kong. The Web site associated with Corsair7.com allegedly marketed sexually-explicit services.

Defendants failed to answer the complaint, and plaintiff obtained an order of default.

Judge Saundra Brown Armstrong denied the motion because the complaint merely alleged niche market fame:

“Corsair fails to allege sufficient facts to show its mark is ‘famous.’ In particular, while Corsair alleges its mark is well known to computer manufacturers who purchase its products, Corsair never alleges facts which would show its mark is well known by the general consuming public of the United States. This flaw is fatal. In 2006, Congress expressly amended § 1125(c)(2) to deny dilution protection to marks which were only ‘famous’ in ‘niche markets.’ Again, as already stated, this amendment reinforces that the policy that only ‘famous’ marks, such as ‘Tiffany,’ are the types of marks which may claim dilution, as this protection bars almost any other use of the mark or modified mark by persons other than the owner. Because Corsair has failed to allege facts demonstrating its mark is ‘famous,’ it may not claim dilution against Son under § 1125(c).”

Niche fame stopped making the grade two years ago, gang. Nationwide fame is what’s needed these days, which CORSAIR doesn’t have.

The case cite is Corsair Memory, Inc. v. Corsair7.com, 2008 WL 4820789, No. 08-3460 (N.D. Calif. Nov. 4, 2008).

Full post as published by Seattle Trademark Lawyer on November 10, 2008 (boomark / email).