Patagonia Case Cautions Against Rule 12 Motions to Dismiss Dilution Claims
Published By IP Watchdog October 16, 2019

The U.S. District Court for the Central District of California recently issued a decision in the closely watched Patagonia, Inc. v. Anheuser-Busch, LLC, 19-CV-02702 case. Here, the clothing company Patagonia sued the beer company Anheuser-Busch for trademark infringement, unfair competition, dilution of a famous mark, and cancellation of Anheuser-Busch’s various PATAGONIA trademark registrations. Anheuser-Busch moved to dismiss certain claims, including the dilution claim, for failure to state a claim under Rule 12(b)(6). The court issued a decision finding that Patagonia had adequately pled its dilution claim. The case provides trademark practitioners with insight into early case strategies when asserting and defending against a trademark dilution claim.

Meeting the Threshold for Dilution

The federal trademark dilution statute allows trademark owners to protect their famous marks against dilution by blurring or tarnishment. Dilution by blurring is the “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” 15 U.S.C. § 1125(c)(2)(B). Dilution by tarnishment is “association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.” 15 U.S.C. 1125(c)(2)(C).

This is an except from the article originally published by IP Watchdog on October 14, 2019.  Read the full article here.

Forward Thinkers