What is a famous mark?
A famous mark is a mark that has become so well known, that it has become almost universally recognized. An example of such a mark would be “McDonald’s” or “Coca-Cola.” Famous marks become important where an owner of a trademark is claiming trademark dilution against a defendant. The Federal Anti-Dilution Act of 1996 provides that an owner of a famous mark is entitled to an injunction where a defendant’s use of the mark causes dilution of the distinctive quality of the owner’s famous mark. In determining whether a mark is famous, a court will consider a list of eight factors, found in the 1996 Federal Anti-Dilution Act.
Also: By what criteria can the millions of people on the Internet registering domain names know if a mark is famous? And: Does a famous mark which uses words that are generic or descriptive or an ordinary, dictionary words (in contexts outside the particular goods or services claimed in the registration) merit the same protection as a mark which is coined? In setting out these questions, we urge WIPO to use difficult examples of the types of problems that might arise with famous marks, including McDonald’s – as a name listed repeatedly in White Pages residential listings, and also in business sections; Pony – the name of a large multinational sporting goods company; and Apple – the name of a computer company, fruit, child’s groups, a major record company, vendors and many other organizations and companies. We also request that WIPO expand this section to include questions about the role of existing treaties and agreements outside of WIPO, including GATT and WTO treaties, and how famous
