Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA329627
`ESTTA Tracking number:
`01/29/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91170977
`Plaintiff
`Mattel, Inc.
`Edward T. Colbert, William M. Merone
`Kenyon & Kenyon LLP
`1500 K Street, NW
`Washington, DC 20005
`UNITED STATES
`tmdocketdc@kenyon.com, wmerone@kenyon.com, ekane@kenyon.com,
`cstull@kenyon.com, ecolbert@kenyon.com
`Plaintiff's Notice of Reliance
`William M. Merone
`wmerone@kenyon.com, ekane@kenyon.com, tmdocketdc@kenyon.com
`/William M. Merone/
`01/29/2010
`Pages from NOR - Cases and Articles Part 3 of 3.pdf ( 71 pages )(667371 bytes
`)
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`4/23/85 SFLSUN-SENT 1E
`
`Page 2
`
`Barbie`s most notable crony is Ken, with whom she has shared an undefined relationship since 1961. In the 1985
`Mattel catalog, Barbie`s canopy ``dream bed`` remains, like Barbie herself, a single. About 20 million Barbie fash-
`ion outfits also were sold in 1984.
`
`If Barbie appears even more glamorous these days, Berard contends, it is because the times are that way. ``When
`you came into the `80s,`` she says, ``women returned to romance, to fashion. When the mod look was in, in the `60s,
`Ken had that long hair that stood up, and we say now, `God, that was awful.` But that was what people were wear-
`ing.``
`
`Because Barbie`s life is mapped two years in advance, Mattel is now conceptualizing her 1987 activities. This two-
`year lag helps to explain why there wasn`t a Barbie physical workout center until this year, deep into America`s fit-
`ness boom.
`
`The legend of Barbie, as told by Mattel, began in 1958 when Ruth Handler, the wife of one of the company`s co-
`founders, conceived the idea of a ``fashion`` doll and named it after her daughter. The first Barbie, sold a year later,
`was a rather sickly looking white figure with a ponytail, high- heeled shoes, hoop earrings, bright red lips, heavy
`eyeliner, pointed eyebrows and a zebra-striped swimsuit. Ironically, she looked like someone who would feel per-
`fectly at home in a new wave dance club, circa 1985, which is something no one would say about the current Barbie.
`
`Since her birth, Barbie has acquired an entire family tree of friends, relatives and pets. She has lived in at least nine
`different residences, changed her style several times and undergone three distinct face-lifts. She went off to college
`in 1970, when Mattel offered a ``campus`` that did not include a classroom. She has gone from Jackie Kennedy pill-
`box hats to Jane Fonda workout clothes. She ice skated in the 1960s, jogged in the `70s and now, of course, pumps
`iron. She learned to move her legs in 1964, first twisted at the waist in 1967, spoke her first words in 1968, acquired
`a suntan in 1971 and learned to make kissing sounds in 1979.
`
`Barbie has become a hot investment, with any doll over 10 years old valued at from $30 to $1,000.
`
`There have been, among others, Fashion Queen Barbie and Fashion Jeans Barbie, Talking Barbie and Spanish Talk-
`ing Barbie, Sun Valley Barbie and Sun Lovin` Barbie, Malibu Barbie and Newport Barbie -- not to mention Irish
`Barbie, Swiss Barbie, Spanish Barbie, Swedish Barbie, Black Barbie, Hispanic Barbie, Eskimo Barbie and East In-
`dia Barbie. Such international Barbies have basically required only costume changes, although Japanese Barbie was
`given Oriental facial features three years ago.
`
`Now Barbie has joined the computer age, in a line of action toys known as Epyx`s Computer Activity Toys. In Bar-
`bie`s game, the player races the clock to get Barbie ready for her date with Ken. The player needs to choose from
`hundreds of clothing styles, colors and patterns as well as decide which hairstyle to choose.
`
`But Barbie is no revolutionary, no wave maker. You will see no Single Parent Barbie nor Gay Ken. Anything that
`surrounds Barbie, Berard emphasizes, must be ``very positive.`` It must ``really befit Barbie`s image.`` As a result,
`Barbie is never on the cutting edge, despite the fact that Mattel likes to point out she had an astronaut outfit in 1965.
`More typical was Western Barbie, who was issued in 1981, fully a year after the ``urban cowboy`` look peaked un-
`der the weight of the movie of the same name.
`
`Barbie is ageless, without parents, asexual. ``She is not from a place or from a time,`` Berard says. ``She`s whatever
`you want her to be. And that`s so, so important to her success.``
`
`But Irish Barbie and the other foreign versions notwithstanding, she is also the American Dream taken to its limits, a
`miniature representation of much that is good or bad about America. She stands, in exaggerated form, for the things
`Americans most respect and fear about themselves. Her apparently sensual body is actually a paean to the belief
`
`© 2010 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`
`4/23/85 SFLSUN-SENT 1E
`
`Page 2
`
`that, along with being too rich, you can never be too thin. If her measurements were translated into human terms --
`assuming she was an average 18-year-old girl standing 5 feet, 4 1/2 inches tall -- she would be a sickly 29 1/2-16
`3/4-26 3/4.
`
`Mattel has heard all the criticisms of this way of life and is publicly unimpressed. Barbie as Sybarite? ``I don`t think
`that`s true,`` Berard counters. ``The fact that little girls think in idealistic ways is what dreaming is all about. You
`don`t dream the reality because the reality often isn`t much fun to dream about. So you try to get a little bit above
`reality. Which is where I think Barbie is.``
`
`Nor is Mattel ready to accept the notion that Barbie has, through her new career, become America`s tiniest yuppie.
```We can honestly say that when we developed the career theme we never thought of yuppies,`` Wszalek says.
```That`s just a faddish thing that`s happened coincidentally.``
`
`Copyright ? 1985 Sun-Sentinel
`
`
` ---- INDEX REFERENCES ---
`
`
`COMPANY: MATTEL INC
`
`INDUSTRY: (Entertainment (1EN08); Consumer Products & Services (1CO62); Games & Toys (1GA85))
`
`REGION: (USA (1US73); Americas (1AM92); North America (1NO39))
`
`Language: EN
`
`OTHER INDEXING: (ADAPTING; AMERICAN DREAM; IRISH BARBIE; MATTEL; MATTEL INC) (Barbie;
`Barbies; Black Barbie; Eskimo Barbie; Fashion Jeans Barbie; Gay Ken; Hispanic Barbie; Jane Fonda; Ken; Newport
`Barbie; Sun Lovin; Sybarite; Talking Barbie; Tanning; Tom Wszalek; Wszalek)
`
`KEYWORDS: TOYS; DOLLS
`
`EDITION: SUN-SENTINEL
`
`Word Count: 1549
`4/23/85 SFLSUN-SENT 1E
`END OF DOCUMENT
`
`
`
`© 2010 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`
`Exhibit 80
`
`
`
`

`
`
`
`
`
`550 F.Supp.2d 657, 233 Ed. Law Rep. 606
`(Cite as: 550 F.Supp.2d 657)
`
`
`
`United States District Court,
`W.D. Texas,
`Austin Division.
`The BOARD OF REGENTS, the UNIVERSITY OF
`TEXAS SYSTEM, on Behalf of the UNIVERSITY
`OF TEXAS AT AUSTIN
`v.
`KST ELECTRIC, LTD.
`No. A-06-CA-950 LY.
`
`
`
`
`
`Feb. 25, 2008.
`
`
`Background: University, as registered trademark
`holder, brought action against electric company as-
`serting a number of state and federal trademark
`claims alleging company's logos infringed univer-
`sity's logo. Electric company moved for summary
`judgment.
`
`Holdings: The District Court, Lee Yeakel, J.,
`adopted the opinion of Andrew W. Austin, United
`States Magistrate Judge, which held that United
`States Magistrate Judge held that:
`(1) genuine issue of material fact as to whether uni-
`versity knew about company's logo at least six years
`prior to filing suit precluded summary judgment on
`laches defense;
`(2) genuine issue of material fact as to whether uni-
`versity's delay in asserting its rights was inexcusable
`precluded summary judgment on laches defense;
`(3) genuine issue of material fact as to whether com-
`pany's logos created a likelihood of confusion with
`respect to university's logo precluded summary
`judgment on trademark infringement and unfair com-
`petition claims; and
`(4) evidence failed to demonstrate extremely high
`recognition of university's logo necessary to show
`fame, as required to entitle logo to anti-dilution pro-
`tection.
`
`Motions granted in part and denied in part.
`
`
`West Headnotes
`
`
`[1] United States Magistrates 394
`
`27
`
`
`
`Page 1
`
`1534
`
`1539
`
`
`394 United States Magistrates
` 394k24 Review and Supervision by District Court
` 394k27 k. De Novo Hearing or Review. Most
`Cited Cases
`A party's failure to timely file written objections to a
`magistrate judge's proposed findings, conclusions,
`and recommendations in a report and recommenda-
`tion bars that party, except upon grounds of plain
`error, from attacking on appeal the unobjected-to
`proposed factual findings and legal conclusions ac-
`cepted by the district court.
`
`[2] Trademarks 382T
`
`382T Trademarks
` 382TVIII Violations of Rights
` 382TVIII(D) Defenses, Excuses, and Justifi-
`cations
` 382Tk1533 Delay in Assertion of Rights;
`Laches
` 382Tk1534 k. In General. Most Cited
`Cases
`Laches, in a trademark infringement action, com-
`prises three elements: (1) delay in asserting one's
`trademark rights, (2) lack of excuse for the delay, and
`(3) undue prejudice to the alleged infringer caused by
`the delay.
`
`[3] Trademarks 382T
`
`382T Trademarks
` 382TVIII Violations of Rights
` 382TVIII(D) Defenses, Excuses, and Justifi-
`cations
` 382Tk1539 k. Acquiescence. Most Cited
`Cases
`In order to establish the defense of acquiescence in a
`trademark infringement action, a defendant must
`prove that: (1) the plaintiff knew or should have
`known of the defendant's use of the trademark; (2)
`the plaintiff made implicit or explicit assurances to
`the defendant; and (3) the defendant relied on the
`assurances.
`
`[4] Trademarks 382T
`
`
`1535
`
`© 2010 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`
`
`
`550 F.Supp.2d 657, 233 Ed. Law Rep. 606
`(Cite as: 550 F.Supp.2d 657)
`
`Page 2
`
`2493
`
`2493
`
`1437
`
`382T Trademarks
` 382TVIII Violations of Rights
` 382TVIII(D) Defenses, Excuses, and Justifi-
`cations
` 382Tk1533 Delay in Assertion of Rights;
`Laches
` 382Tk1535 k. Knowledge of Facts.
`Most Cited Cases
`The period for laches begins, in a trademark in-
`fringement action, when the plaintiff knew or should
`have known of the infringement.
`
`[5] Trademarks 382T
`
`382T Trademarks
` 382TVIII Violations of Rights
` 382TVIII(A) In General
` 382Tk1437 k. Knowledge, Intent, and Mo-
`tives; Bad Faith. Most Cited Cases
`Any acts after receiving a cease and desist letter are
`at the defendant's own risk, for purposes of trademark
`infringement, because it is on notice of the plaintiff's
`objection to such acts.
`
`[6] Federal Civil Procedure 170A
`
`170A Federal Civil Procedure
` 170AXVII Judgment
` 170AXVII(C) Summary Judgment
` 170AXVII(C)2 Particular Cases
` 170Ak2493 k. Copyright, Trademark,
`and Unfair Competition Cases. Most Cited Cases
`Genuine issue of material fact existed as to whether
`university, as registered trademark holder, knew, or
`should have known, about logo allegedly infringing
`its mark at least six years prior to filing suit, preclud-
`ing summary judgment on alleged infringer's laches
`defense to university's trademark claims.
`
`[7] Federal Civil Procedure 170A
`
`170A Federal Civil Procedure
` 170AXVII Judgment
` 170AXVII(C) Summary Judgment
` 170AXVII(C)3 Proceedings
` 170Ak2541 k. Depositions and Inter-
`rogatories. Most Cited Cases
`A court may not consider hearsay evidence in deposi-
`tions submitted to defeat or prevail on a summary
`judgment motion.
`
`2493
`
`2541
`
`© 2010 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`
`[8] Federal Civil Procedure 170A
`
`170A Federal Civil Procedure
` 170AXVII Judgment
` 170AXVII(C) Summary Judgment
` 170AXVII(C)2 Particular Cases
` 170Ak2493 k. Copyright, Trademark,
`and Unfair Competition Cases. Most Cited Cases
`Genuine issue of material fact existed as to whether
`delay of university, as registered trademark holder, in
`asserting its trademark rights against alleged in-
`fringer, was inexcusable, precluding summary judg-
`ment on alleged infringer's laches defense to univer-
`sity's trademark claims.
`
`[9] Trademarks 382T
`
`382T Trademarks
` 382TVIII Violations of Rights
` 382TVIII(D) Defenses, Excuses, and Justifi-
`cations
` 382Tk1533 Delay in Assertion of Rights;
`Laches
` 382Tk1534 k. In General. Most Cited
`Cases
`A laches defense requires that there be inexcusable
`delay in asserting one's trademark rights.
`
`[10] Federal Civil Procedure 170A
`
`170A Federal Civil Procedure
` 170AXVII Judgment
` 170AXVII(C) Summary Judgment
` 170AXVII(C)2 Particular Cases
` 170Ak2493 k. Copyright, Trademark,
`and Unfair Competition Cases. Most Cited Cases
`Genuine issue of material fact existed as to whether
`alleged infringer had discontinued use of allegedly
`infringing logo more than two years before univer-
`sity, as trademark holder, filed suit, precluding sum-
`mary judgment on alleged infringer's statute of limi-
`tations defense to university's trademark claims.
`
`[11] Trademarks 382T
`
`382T Trademarks
` 382TVIII Violations of Rights
` 382TVIII(D) Defenses, Excuses, and Justifi-
`cations
`
`1534
`
`1539
`
`

`
`
`
`550 F.Supp.2d 657, 233 Ed. Law Rep. 606
`(Cite as: 550 F.Supp.2d 657)
`
`Page 3
`
` 382Tk1539 k. Acquiescence. Most Cited
`Cases
`The time-period after a trademark holder sends a
`cease and desist letter to an alleged infringer cannot
`be taken into consideration insofar as an acquies-
`cence defense is concerned.
`
`[12] Trademarks 382T
`
`382T Trademarks
` 382TVIII Violations of Rights
` 382TVIII(D) Defenses, Excuses, and Justifi-
`cations
` 382Tk1520 k. In General. Most Cited
`Cases
`Simply because a defendant is small and local does
`not mean that it cannot infringe another's trademark.
`
`[13] Federal Civil Procedure 170A
`
`170A Federal Civil Procedure
` 170AXVII Judgment
` 170AXVII(C) Summary Judgment
` 170AXVII(C)2 Particular Cases
` 170Ak2493 k. Copyright, Trademark,
`and Unfair Competition Cases. Most Cited Cases
`Genuine issue of material fact existed as to whether
`alleged infringer's mark created a likelihood of con-
`fusion with respect to mark of university, as the reg-
`istered owner of the trademark, precluding summary
`judgment on university's trademark infringement and
`unfair competition causes of action.
`
`[14] Trademarks 382T
`
`382T Trademarks
` 382TIII Similarity Between Marks; Likelihood of
`Confusion
` 382Tk1083 Nature of Confusion
` 382Tk1085 k. Extent or Degree of Confu-
`sion. Most Cited Cases
`A “likelihood of confusion,” required to establish
`trademark
`infringement and unfair competition,
`means that confusion is not just possible, but prob-
`able.
`
`[15] Trademarks 382T
`
`382T Trademarks
` 382TIII Similarity Between Marks; Likelihood of
`
`1520
`
`1085
`
`1084
`
`2493
`
`1102
`
`Confusion
` 382Tk1083 Nature of Confusion
` 382Tk1084 k. In General. Most Cited
`Cases
`The confusion that both the trademark infringement
`and unfair competition statutory schemes aim to dis-
`sipate is not only as to source, but also as to affilia-
`tion, connection, or sponsorship.
`
`[16] Trademarks 382T
`
`382T Trademarks
` 382TIII Similarity Between Marks; Likelihood of
`Confusion
` 382Tk1100 Relationship Between Goods or
`Services Underlying Marks
` 382Tk1102 k. Similarity or Dissimilarity in
`General. Most Cited Cases
`
` Trademarks 382T
`
`382T Trademarks
` 382TIII Similarity Between Marks; Likelihood of
`Confusion
` 382Tk1100 Relationship Between Goods or
`Services Underlying Marks
` 382Tk1104 k. Markets and Territories;
`Competition. Most Cited Cases
`
` Trademarks 382T
`
`382T Trademarks
` 382TIII Similarity Between Marks; Likelihood of
`Confusion
` 382Tk1107 Nature and Circumstances of Use
`of Marks
` 382Tk1110 k. Trade Channels; Sales, Ad-
`vertising, and Marketing. Most Cited Cases
`It is not necessary that allegedly infringing goods and
`services be identical or even competitive in order to
`support a finding of likelihood of confusion neces-
`sary to establish trademark infringement and unfair
`competition; rather, it is sufficient that the goods and
`services are related in some manner, or that the cir-
`cumstances surrounding their marketing are such,
`that they would be likely to be encountered by the
`same persons in situations that would give rise, be-
`cause of the marks used thereon, to a mistaken belief
`that they originate from or are in some way associ-
`ated with the same source or that there is an associa-
`
`1104
`
`1110
`
`© 2010 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`
`
`
`550 F.Supp.2d 657, 233 Ed. Law Rep. 606
`(Cite as: 550 F.Supp.2d 657)
`
`Page 4
`
`1081
`
`1092
`
`1033
`
`tion or connection between the sources of the respec-
`tive goods or services.
`
`[17] Trademarks 382T
`
`382T Trademarks
` 382TIII Similarity Between Marks; Likelihood of
`Confusion
` 382Tk1081 k. Factors Considered in General.
`Most Cited Cases
`In assessing whether use of a mark creates a likeli-
`hood of confusion, necessary to establish trademark
`infringement and unfair competition, as to affiliation
`or endorsement, courts consider “digits of confu-
`sion,” a flexible and nonexhaustive list of factors that
`tend to prove or disprove that consumer confusion is
`likely; those factors are: (1) the type of mark alleg-
`edly infringed, (2) the similarity between the two
`marks, (3) the similarity of the products or services,
`(4) the identity of retail outlets and purchasers, (5)
`the identity of the advertising media used, (6) the
`defendant's intent, and (7) any evidence of actual
`confusion.
`
`[18] Trademarks 382T
`
`382T Trademarks
` 382TIII Similarity Between Marks; Likelihood of
`Confusion
` 382Tk1090 Nature of Marks
` 382Tk1092 k. Strength or Fame of Marks;
`Degree of Distinctiveness. Most Cited Cases
`The strength of a mark, as a factor in analyzing
`whether likelihood of confusion requirement has
`been met in a trademark infringement or unfair com-
`petition action, refers to its ability to identify the
`source of the goods being sold under its aegis.
`
`[19] Trademarks 382T
`
`382T Trademarks
` 382TII Marks Protected
` 382Tk1033 k. Levels or Categories of Dis-
`tinctiveness in General; Strength of Marks in Gen-
`eral. Most Cited Cases
`
` Trademarks 382T
`
`382T Trademarks
` 382TIII Similarity Between Marks; Likelihood of
`
`1031
`
`Confusion
` 382Tk1090 Nature of Marks
` 382Tk1092 k. Strength or Fame of Marks;
`Degree of Distinctiveness. Most Cited Cases
`The degree to which a senior user's mark is entitled to
`protection under trademark infringement and unfair
`competition laws depends on whether the mark is
`classified as generic, descriptive, suggestive or fanci-
`ful/arbitrary; the stronger the mark, the greater the
`protection it receives because the greater the likeli-
`hood that consumers will confuse the junior user's
`use with that of the senior user.
`
`[20] Trademarks 382T
`
`382T Trademarks
` 382TII Marks Protected
` 382Tk1029 Capacity to Distinguish or Sig-
`nify; Distinctiveness
` 382Tk1031 k. Inherent Distinctiveness in
`General. Most Cited Cases
`
` Trademarks 382T
`
`382T Trademarks
` 382TII Marks Protected
` 382Tk1029 Capacity to Distinguish or Sig-
`nify; Distinctiveness
` 382Tk1032 k. Acquired Distinctiveness
`and Secondary Meaning in General. Most Cited
`Cases
`
` Trademarks 382T
`
`382T Trademarks
` 382TIII Similarity Between Marks; Likelihood of
`Confusion
` 382Tk1090 Nature of Marks
` 382Tk1092 k. Strength or Fame of Marks;
`Degree of Distinctiveness. Most Cited Cases
`The strength of a trademark, as a factor in analyzing
`whether likelihood of confusion requirement has
`been met in a trademark infringement or unfair com-
`petition action, involves two components: its inherent
`or intrinsic distinctiveness and the distinctiveness it
`has acquired in the marketplace, i.e., its commercial
`strength; inherent distinctiveness, examines a mark's
`theoretical potential to identify plaintiff's goods or
`services without regard to whether it has actually
`done so, and acquired distinctiveness, looks solely to
`
`1032
`
`1092
`
`1092
`
`© 2010 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`
`
`
`550 F.Supp.2d 657, 233 Ed. Law Rep. 606
`(Cite as: 550 F.Supp.2d 657)
`
`Page 5
`
`1039
`
`1095
`
`1095
`
`recognition plaintiff's mark has earned in the market-
`place as a designator of plaintiff's goods or services.
`
`[21] Trademarks 382T
`
`382T Trademarks
` 382TII Marks Protected
` 382Tk1039 k. Arbitrary or Fanciful Terms or
`Marks. Most Cited Cases
`Fanciful or arbitrary marks are generally “strong”
`marks and are therefore accorded more protection
`under trademark law.
`
`[22] Trademarks 382T
`
`382T Trademarks
` 382TIII Similarity Between Marks; Likelihood of
`Confusion
` 382Tk1093 Relationship Between Marks
` 382Tk1095 k. Similarity or Dissimilarity in
`General. Most Cited Cases
`Absolute identity is not necessary for trademark in-
`fringement; all that is necessary is enough similarity
`between the marks to confuse consumers.
`
`[23] Trademarks 382T
`
`382T Trademarks
` 382TIII Similarity Between Marks; Likelihood of
`Confusion
` 382Tk1093 Relationship Between Marks
` 382Tk1095 k. Similarity or Dissimilarity in
`General. Most Cited Cases
`
` Trademarks 382T
`
`382T Trademarks
` 382TIII Similarity Between Marks; Likelihood of
`Confusion
` 382Tk1100 Relationship Between Goods or
`Services Underlying Marks
` 382Tk1102 k. Similarity or Dissimilarity in
`General. Most Cited Cases
`The greater the degree of similarity between the ap-
`plicant's mark and the cited registered mark, the
`lesser the degree of similarity between the applicant's
`goods or services and the registrant's goods or ser-
`vices that is required to support a finding of likeli-
`hood of confusion necessary to establish trademark
`infringement and unfair competition.
`
`1102
`
`1111
`
`1437
`
`1102
`
`
`[24] Trademarks 382T
`
`382T Trademarks
` 382TIII Similarity Between Marks; Likelihood of
`Confusion
` 382Tk1111 k. Intent; Knowledge of Confu-
`sion or Similarity. Most Cited Cases
`Good faith is not a defense to trademark infringement
`and the reason for this is clear: if potential purchasers
`are confused, no amount of good faith can make them
`less so.
`
`[25] Trademarks 382T
`
`382T Trademarks
` 382TVIII Violations of Rights
` 382TVIII(A) In General
` 382Tk1437 k. Knowledge, Intent, and Mo-
`tives; Bad Faith. Most Cited Cases
`Bad faith may, without more, prove trademark in-
`fringement.
`
`[26] Trademarks 382T
`
`382T Trademarks
` 382TIII Similarity Between Marks; Likelihood of
`Confusion
` 382Tk1100 Relationship Between Goods or
`Services Underlying Marks
` 382Tk1102 k. Similarity or Dissimilarity in
`General. Most Cited Cases
`
` Trademarks 382T
`
`382T Trademarks
` 382TIII Similarity Between Marks; Likelihood of
`Confusion
` 382Tk1100 Relationship Between Goods or
`Services Underlying Marks
` 382Tk1104 k. Markets and Territories;
`Competition. Most Cited Cases
`Similarity of products or services factor, in analyzing
`whether likelihood of confusion requirement has
`been met in a trademark infringement or unfair com-
`petition action, is not as weighty as the others given
`that direct competition or intrinsic relatedness be-
`tween the mark holder and the alleged infringer is not
`required.
`
`
`1104
`
`© 2010 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`
`
`
`550 F.Supp.2d 657, 233 Ed. Law Rep. 606
`(Cite as: 550 F.Supp.2d 657)
`
`Page 6
`
`1627
`
`1459
`
`[27] Trademarks 382T
`
`382T Trademarks
` 382TIX Actions and Proceedings
` 382TIX(C) Evidence
` 382Tk1620 Weight and Sufficiency
` 382Tk1627 k. Marks Protected. Most
`Cited Cases
`Evidence presented by university relating to popular-
`ity of its football program failed to demonstrate the
`extremely high recognition of its logo necessary to
`show fame, as required to entitle logo to anti-dilution
`protection under the Trademark Dilution Revision
`Act (TDRA); university's evidence was largely evi-
`dence of niche market fame, unprotected by the
`TDRA, as it was not at all clear whether someone
`who was not a fan of college football would recog-
`nize the logo as being associated with the university.
`Federal Trademark Dilution Act of 1995, § 3(a), 15
`U.S.C.A. § 1125(c).
`
`[28] Trademarks 382T
`
`382T Trademarks
` 382TVIII Violations of Rights
` 382TVIII(B) Dilution
` 382Tk1458 Nature and Elements in Gen-
`eral
` 382Tk1459 k. In General. Most Cited
`Cases
`To state a trademark dilution claim under the Trade-
`mark Dilution Revision Act (TDRA), a plaintiff must
`show: (1) that the plaintiff owns a famous mark that
`is distinctive; (2) that the defendant has commenced
`using a mark in commerce that allegedly is diluting
`the famous mark; (3) that a similarity between the
`defendant's mark and the famous mark gives rise to
`an association between the marks; and (4) that the
`association is likely to impair the distinctiveness of
`the famous mark or likely to harm the reputation of
`the famous mark.
`
`[29] Trademarks 382T
`
`382T Trademarks
` 382TVIII Violations of Rights
` 382TVIII(B) Dilution
` 382Tk1468 k. Marks Protected; Strength or
`Fame. Most Cited Cases
`Dilution is a cause of action invented and reserved
`for a select class of marks, namely those marks with
`
`1468
`
`1186
`
`1468
`
`such powerful consumer associations that even non-
`competing uses can impinge on their value.
`
`[30] Trademarks 382T
`
`382T Trademarks
` 382TVI Nature, Extent, and Disposition of Rights
` 382Tk1186 k. Rights in Gross; Relation of
`Mark to Good Will or Business in General. Most
`Cited Cases
`
` Trademarks 382T
`
`382T Trademarks
` 382TVIII Violations of Rights
` 382TVIII(B) Dilution
` 382Tk1468 k. Marks Protected; Strength or
`Fame. Most Cited Cases
`Dilution causes of action, much more so than in-
`fringement and unfair competition laws, tread very
`close to granting “rights in gross” in a trademark.
`
`[31] Trademarks 382T
`
`382T Trademarks
` 382TVIII Violations of Rights
` 382TVIII(B) Dilution
` 382Tk1468 k. Marks Protected; Strength or
`Fame. Most Cited Cases
`A mark usually will achieve broad-based fame, as to
`entitle it to anti-dilution protection under the Trade-
`mark Dilution Revision Act (TDRA), only if a large
`portion of the general consuming public recognizes
`that mark; in other words, the mark must be a house-
`hold name. Federal Trademark Dilution Act of 1995,
`§ 3(a), 15 U.S.C.A. § 1125(c)(2).
`
`[32] Trademarks 382T
`
`382T Trademarks
` 382TVII Registration
` 382TVII(C) Effect of Federal Registration
` 382Tk1358 Particular Effects; Rights Ac-
`quired
` 382Tk1363 k. Nature or Type of Mark;
`Distinctiveness and Strength. Most Cited Cases
`One cannot logically infer fame, as to entitle a mark
`to anti-dilution protection under the Trademark Dilu-
`tion Revision Act (TDRA), from the fact that it is one
`of the millions on the federal register; on the other
`
`1468
`
`1363
`
`© 2010 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`
`
`
`550 F.Supp.2d 657, 233 Ed. Law Rep. 606
`(Cite as: 550 F.Supp.2d 657)
`
`hand, one could logically infer lack of fame from a
`lack of registration. Federal Trademark Dilution Act
`of 1995, § 3(a), 15 U.S.C.A. § 1125(c).
`*661Louis T. Pirkey, Susan J. Hightower, William G.
`Barber, Pirkey Barber, LLP, Austin, TX, for The
`Board of Regents, The University of Texas System,
`on Behalf of the University of Texas at Austin.
`
`Donald Wayne Holcomb, Knolle & Holcomb,
`Raymond M. Galasso, Galasso and Associates, LP,
`Austin, TX, for KST Electric, Ltd.
`
`
`ORDER ON REPORT AND RECOMMENDA-
`TION
`
`
`LEE YEAKEL, District Judge.
`
`Before the Court is the above styled and numbered
`cause of action. The Court referred Defendant KST
`Electric, LTD.'s (“KST”) Motion For Summary
`Judgment On Its Affirmative Defenses Of Laches,
`Estoppel By Laches And Statute Of Limitations filed
`November 9, 2007 (Clerk's Document No. 37) and
`KST's Motion For Summary Judgment On UT's Fed-
`eral Dilution, Trademark Infringement And Unfair
`Competition Claims filed November 9, 2007 (Clerk's
`Document No. 38) to the United States Magistrate
`Judge for a report and recommendation (Clerk's
`Document No. 34). See28 U.S.C. § 636(b);
`Fed.R.Civ.P. 72; Loc. R.W.D. Tex. Appx. C, 1(d).
`After considering the motions, Plaintiff The Board of
`Regents, The University of Texas System, On Behalf
`Of The University Of Texas At Austin's (“UT”) re-
`sponses (Clerk's Document Nos. 39 & 40), UT's reply
`(Clerk's Document No. 45), the parties' summary-
`judgment proof, the file, and the applicable law the
`Magistrate Judge signed his Report and Recommen-
`dation on February 5, 2008 (Clerk's Document No.
`53). By his Report and Recommendation, the Magis-
`trate Judge recommends that this Court deny KST's
`motion for summary judgment on its affirmative de-
`fenses of laches, estoppel by laches, and statute of
`limitations, and grant the portion of KST's motion for
`summary judgment regarding UT's federal trademark
`dilution claim and deny the remainder of that motion
`regarding UT's federal trademark infringement and
`unfair competition claims. The parties received the
`Report and Recommendation on February 6, 2008
`and objections, if any, were due to be filed on or be-
`fore February 21. SeeFed R. Civ. P. 72(b) (within ten
`days after service of report and recommendation,
`
`Page 7
`
`party may serve and file specific written objections to
`proposed findings and recommendations).
`
`Rather than file objections, UT filed Plaintiff's Re-
`sponse To Report And Recommendation Of The
`United States Magistrate Judge on February 19, 2008
`(Clerk's Document No. 54). By its response, UT dis-
`agrees with the portion of the Report and Recom-
`mendation that finds and concludes that marks of
`college sports teams, and particularly those of UT,
`are excluded from federal dilution protection because
`their fame is limited to a “niche” market. See15
`U.S.C. § 1125(c)(2)(A). Nevertheless, UT's response
`provides that UT does not object to the recommenda-
`tion that summary judgment be granted in favor of
`KST on UT's federal trademark-dilution claim be-
`cause all of the relief UT seeks is *662 available pur-
`suant to other claims that remain for trial in this
`cause.
`
`[1] A party may serve and file specific written objec-
`tions to the proposed findings and recommendations
`of a magistrate judge within ten days after being
`served with a copy of the report and recommenda-
`tion, thereby securing a de novo review by the district
`court. See28 U.S.C. § 636(b); Fed.R.Civ.P. 72(b). A
`party's failure to timely file written objections to the
`proposed findings, conclusions, and recommenda-
`tions in a report and recommendation bars that party,
`except upon grounds of plain error, from attacking on
`appeal the unobjected-to proposed factual findings
`and legal conclusions accepted by the district court.
`See Douglass v. United Servs. Auto. Ass'n, 79 F.3d
`1415 (5th Cir.1996) (en banc). The Court, having
`reviewed the entire record and finding no plain error,
`will approve and accept the Magistrate Judge's Re-
`port and Recommendation.
`
`IT IS ORDERED that the United States Magistrate
`Judge's Report and Recommendation (Clerk's Docu-
`ment No. 53) filed in this action is hereby AP-
`PROVED AND ACCEPTED.
`
`IT IS FURTHER ORDERED that KST's Motion
`For Summary Judgment On Its Affirmative Defenses
`Of Laches, Estoppel By Laches And Statute Of Limi-
`tations filed Novembe