Introduction: Fame Is Not Just for Dilution Cases

When trademark practitioners hear the word fame, it is often associated exclusively with dilution claims under Section 43(c) of the Lanham Act. While fame is a required element for dilution, its relevance does not end there. Before the Trademark Trial and Appeal Board, evidence of fame can play a meaningful role in likelihood of confusion cases even when dilution is not pleaded.

Understanding how the TTAB evaluates fame outside dilution claims requires a careful reading of Board precedent and a strategic approach to building the evidentiary record. Fame, when properly established, can strengthen a likelihood of confusion claim by amplifying the scope of protection afforded to a mark. When misunderstood or poorly supported, it can also backfire.

Fame in the Context of Likelihood of Confusion

In TTAB proceedings, likelihood of confusion is evaluated using the DuPont factors. One of the most important of these factors is the strength of the mark, which includes both conceptual strength and commercial strength. Fame fits squarely within commercial strength.

The Board has repeatedly recognized that famous marks enjoy a broader scope of protection than less well known marks. This principle applies even when dilution is not alleged. A mark that is widely recognized by consumers is more likely to be remembered, more likely to be associated with related goods or services, and more likely to trigger confusion when a similar mark appears in the marketplace.

How the TTAB Defines Fame Outside Dilution

It is critical to understand that the level of fame required for likelihood of confusion is not the same as the heightened fame standard required for dilution. Dilution fame must be extensive, nationwide, and recognized by the general consuming public. For likelihood of confusion purposes, the Board applies a more flexible and contextual analysis.

Fame in this setting refers to the degree of recognition the mark enjoys within the relevant purchasing public. A mark may be considered strong and commercially significant even if it does not rise to the level of household name status. This distinction allows parties to rely on fame evidence in confusion cases without meeting the demanding threshold imposed by dilution law.

Types of Fame Evidence the TTAB Considers

The TTAB evaluates fame based on the totality of the evidence. Common forms of fame evidence include sales figures, advertising expenditures, length of use, market share, media coverage, and unsolicited press. Evidence showing consistent and long term use of a mark in commerce can be particularly persuasive.

Consumer recognition evidence, such as declarations from industry participants or customers, may also support a finding of fame. While consumer surveys are not required, they can be helpful when properly designed and introduced. The Board focuses less on any single data point and more on whether the evidence paints a coherent picture of marketplace recognition.

Procedural Requirements for Introducing Fame Evidence

TBMP trial rules govern how fame evidence must be introduced into the record. Evidence must be properly submitted during the testimony period and supported by appropriate notices of reliance or testimony declarations. Attempting to introduce fame evidence for the first time in briefing is a common mistake that results in exclusion.

Another procedural pitfall involves overreliance on attorney argument. Statements about a mark’s fame must be supported by admissible evidence. The Board will not credit conclusory assertions, no matter how confidently they are presented.

Strategic Use of Fame Evidence by Plaintiffs

For plaintiffs, fame evidence can serve as a force multiplier. When a mark is shown to be well known, similarities between the marks may be viewed as more significant, and even relatively minor overlap in goods or services can carry greater weight.

That said, plaintiffs must be strategic. Overstating fame or presenting weak evidence can undermine credibility. The Board is sensitive to exaggeration and will discount fame claims that are not supported by the record. A focused, evidence driven presentation is far more effective than broad claims of market dominance.

Defensive Use of Fame Evidence by Defendants

Defendants should not assume that fame evidence automatically favors the plaintiff. In some cases, defendants can use fame arguments to their advantage by reframing the narrative. For example, if a mark is famous for a very narrow set of goods or services, defendants may argue that its fame does not extend into the applicant’s distinct market.

Defendants may also challenge the relevance or sufficiency of fame evidence by scrutinizing time periods, geographic scope, or the connection between the evidence and the relevant consumers. Weaknesses in fame proof can become powerful tools for narrowing the scope of protection.

Common Missteps in Fame Arguments Before the TTAB

One frequent mistake is conflating dilution fame with confusion fame. Parties sometimes assume that because they cannot meet the dilution standard, fame evidence is irrelevant altogether. This leaves potential persuasive value on the table.

Another common error is failing to connect fame evidence to the DuPont analysis. Fame must be tied to how consumers perceive the mark in relation to the goods or services at issue. Evidence presented in isolation, without analytical context, carries less weight.

How Fame Influences the Overall DuPont Analysis

When properly established, fame can tilt the likelihood of confusion analysis decisively. A famous mark may require less evidence of relatedness between goods or services. It may also increase the likelihood that consumers will assume sponsorship or affiliation when encountering a similar mark.

However, fame is never dispositive on its own. The TTAB considers all relevant factors, and a strong showing on fame cannot overcome clear dissimilarities in marks or goods. Effective advocacy lies in integrating fame evidence into a cohesive argument across multiple factors.

Conclusion: Fame as a Strategic Asset in TTAB Proceedings

Fame evidence is not limited to dilution claims. In likelihood of confusion cases before the TTAB, fame can significantly shape how the Board views strength, scope of protection, and consumer perception. When supported by solid evidence and presented with procedural precision, fame becomes a strategic asset rather than a risky assertion.

Your brand is everything, and the way it is perceived in the marketplace matters deeply in trademark disputes. If you are navigating a TTAB opposition or cancellation and considering how to leverage or respond to fame evidence, experienced trademark counsel can help you position your case effectively and avoid costly missteps. Let’s simplify this IP process together and protect what you have built.