Chapel No. 13 Case Study

The Plaintiff essentially has two claims under blurring, it may assert that Pets, Inc. has diluted Chapel and Chapel No. 13 as Defendant uses the syllable, ‘pel’ and ‘No. 13’ in its product. The statute sets forth six non-exhaustive factors that will be considered by the court; (1) the “degree of similarity” of the marks, (2) distinctiveness of the famous mark, (3) exclusivity of use of the famous mark, (4) degree of recognition of the famous mark, (5) whether the defendant intended to create an association with the famous mark, and (6) any actual association between the marks 115 U.S.C §1125(c)(2)(B) (i)-(vi).

In considering these factors the court will determine if the defendants use of the mark will create an association with the plaintiffs

Chapel as it represents more than its products and since the product lines are different the court may not be willing to hold Chapel and Petpel No.13 as similar marks, however there is a degree of similarity between Chapel No. 13 and Petpel No.13. In Starbucks Corp. 588 F3d 97 (2d Cir. 2007), the similarity in names was deemed as minimal however the court asserted that it looks at the overall impression created by the logo and its context, i.e. it considers the totality of factors, in doing so it held that the package design for charbucks was different in “imagery, logo and signage,” similarly, in Louis Vuitton S.A. v Haute Diggty Dog, LLC, 507 F.3d 252 (4th Cir. 2007), the mark was imperfectly and partially used by the defendant, hence was not similar. On the contrary in (Malletier v. Hyundai Motor Am., WL1022247, 8 (S.D.N.Y. March, 22, 2012), the marks were held to be similar as they were indistinguishable and the features were set in the same background, shape and color and the initials ‘LZ’ were used, moreover the court further stressed on the context of the marks used. In light of these cases, the rationale emphasized by the court may be used to assert that the imagery is the same, i.e. both designs are ‘astronaut clothing’, secondly the colors gold and silver are both precious metal colors and are transition and Noble metals and so the graphic imagery of both products are the same, the logo and signage may

588 F3d 97 (2d Cir. 2007), the courts were not persuaded by the survey findings, as the findings reflected that 30.5% persons associated the marks and 62% associated the two products but said that it was have a negative impression of a coffee by the name of ‘charbucks’ importantly this argument was brought under actual association and not similarity of marks. Furthermore it is pivotal to note that likelihood of confusion is not considered as a factor for proving dilution. In (Malletier v. Hyundai Motor Am., WL1022247, 8 (S.D.N.Y. March, 22, 2012), 15% of the survey participants held the marks to belong to LV and 62% believed that LV authorized Hyundai to use its mark, hence 77% people believed the marks to be similar. This argument further substantiates ‘Actual Association,’ however it could be used to further reinforce the similarity claim, as the survey results are