This case involves the owners of an erotic item and adult apparel company who named their company a name that imitated the trademarked name of a famous lingerie company. The lingerie company operated many stores nationwide and had a popular mail order catalog. The owners of the adult apparel company came up with a name that used part of the lingerie company’s name. The lingerie company learned about the name of the adult apparel company when an anonymous individual saw a marketing advertisement for the company and was offended by the company’s attempt to use the lingerie company’s reputable name to promote the sale of “unwholesome and tawdry merchandise.” The lingerie company sued the adult merchandise company for trademark infringement.
Question(s) For Expert Witness
- 1. Can a company use a name that imitates the trademarked name of another famous company?
Expert Witness Response
This case involves a type of trademark infringement known as “dilution.” Dilution occurs when a company uses a similar mark to one that is famous and this causes injury to the reputation of the owner of the trademark. In order to bring a trademark infringement action against someone on the basis of dilution, the trademark owner must prove that their mark is famous and distinctive and that another company used a similar mark and this caused dilution in the market. This means that other company’s use of a similar mark harmed the value of the famous mark. In this case, the adult apparel company’s name probably infringed the trademark of the lingerie company because it led to consumers, like the anonymous individual, linking the name of the lingerie company with the name of the adult apparel company. The use of a name that imitated the name of the lingerie company was also likely to confuse consumers about the two companies. Also, the use of a similar name by the adult apparel company was likely to lessen the distinctive quality of the lingerie company’s mark because it tarnished the positive association and selling power of the trademark by creating an indecent association in the minds of consumers. Since the use of a similar name by the adult merchandise company was likely to offend consumers and harm the lingerie company’s reputation, this probably constituted trademark infringement by the adult apparel company.