Dilution by Blurring Shown by Circumstantial Evidence

Thanks to JurisNotes.com for passing along Horphag Research Ltd. v. Garcia (1/9/07) where the Ninth Circuit held that circumstantial and uncontroverted evidence proved that actual blurring has occurred, such that the district court properly granted summary judgment on Horphag’s trademark dilution claims.

The test for trademark dilution . . . requires the trademark owner to show (a) that its mark is famous; (b) that the junior user has made commercial use of the famous mark; (c) that the junior user began using the mark after it had became famous; and (d) that such use caused actual dilution. See Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 873-74 (9th Cir. 1999) (citing Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1324 (9th Cir. 1998)); Moseley, 537 U.S. at 433. Garcia, the junior user, does not challenge the district court’s finding as to the first three requirements. Therefore, we consider his challenges regarding actual dilution, and we also consider his various defenses. . . .

Under Moseley, Horphag need only provide circumstantial evidence that Garcia’s use of Pycnogenol diluted its famous trademark. See 537 U.S. at 433. Moseley explains, however, that use of an identical mark is itself circumstantial evidence. Id.; see also Savin, 391 F.3d at 452 (noting that “where a plaintiff who owns a famous senior mark can show the commercial
use of an identical junior mark, such a showing constitutes circumstantial evidence of the actual-dilution element of an FTDA claim”).

Specifically, Horphag presented circumstantial evidence that Garcia’s use of the Pycnogenol mark constituted blurring. “Blurring occurs when a defendant uses a plaintiff’s trademark to identify the defendant’s goods or services, creating the possibility that the mark will lose its ability to serve as a unique identifier of the plaintiff’s product.” Panavision Int’l, 141 F.3d
at 1326 n.7. The theory of dilution by blurring thus protects the benefits that flow from a sharp and distinct connection between one mark and one product. See McCarthy § 24:70.

Garcia has blurred the sharp connection between Horphag’s product and the mark Pycnogenol. Horphag’s employee Victor Ferrari testified that numerous consumers who contacted Horphag learned, after purchasing Garcia’s product, that the product they purchased was not Horphag’s Pycnogenol. He also received calls asking whether Garcia “was selling a real Pycnogenol product.” This testimony represents evidence that Garcia’s actions have lessened the ability of the mark Pycnogenol to uniquely identify Horphag’s product. Not only does the infringing use create a “mental association” in the consumer’s mind between Horphag’s product and the product Garcia sells, but indeed, the evidence shows that some consumers believed they were purchasing Pycnogenol—with its good will and reputation—when they purchase Garcia’s product. See Moseley, 537 U.S. at 435 (Kennedy, J., concurring) (“If a mark will erode or lessen the power of the famous mark to give customers the assurance of quality and the full satisfaction
they have in knowing they have purchased goods bearing the famous mark, the elements of dilution may be established.”).

Contrary to Garcia’s arguments, consumer surveys and the like are not necessary in cases like this, where the junior and senior mark were identical and where there is circumstantial evidence that blurring actually resulted. See id. at 434. Garcia’s use of the mark Pycnogenol has clearly weakened the unique connection between Horphag’s mark and Horphag’s product.

In 1969, Dr. Jack Masquelier, a French professor of pharmacology, discovered a chemical antioxidant substance made from the bark of a French maritime pine tree. The substance supposedly assists in nutritional distribution and proper circulation. Around 1978, Masquelier brought the product to market under the name “Pycnogenol.” Masquelier1 received the trademark in France for the mark Pycnogenol in 1989.

Around 1987, Horphag began selling the pine bark extract outside of France under contractual relationship with Masquelier. Thereafter, things between Horphag and Masquelier went sour, and the two parties dissolved their relationship. In 1993, Horphag was granted the United States trademark for the mark Pycnogenol. Pycnogenol is now one of the fifteen most sold herbal supplements in the United States.