IP Law News

TiVo Famous Enough to Block New Trademarks, Board Says

Dec. 31, 2018, 8:48 PM

TiVo has become famous enough to block a California lighting company from registering similar-sounding trademarks, an administrative trademark tribunal said.

Tivoli LLC tried to register marks for its Tivotape and Tivobar electric lighting fixtures in 2016, but TiVo Brands LLC argued they would dilute its well-known brand for digital TV recorders. The Trademark Trial and Appeal Board said Dec. 31 that Tivoli couldn’t use its decades-old registration of its own name to establish a right to register new trademarks that could tarnish TiVo’s distinctive brand.

The precedential decision shows the scope of the Federal Trademark Dilution Act of 1995, including a 2006 revision, which lets brands protect the integrity of distinctive trademarks regardless of potential confusion, competition or economic harm. The board’s decision cemented its previously implied view that trademark owners arguing dilution must prove their own mark remained famous during litigation, not just that it became famous before the allegedly diluting trademark came onto the scene.

Tivoli started using the Tivotape mark in 2010 and the Tivobar mark in 2015. But TiVo’s mark had already achieved fame by then, given TiVo’s sales and product reach, the board said. A multitude of unsolicited media reports and television references by celebrities such as Ellen DeGeneres and Oprah Winfrey “tips the balance in favor of our finding” that Tivo is famous for dilution purposes, the board said.

The board rejected Tivoli’s claims that its corporate name, registered as a trademark in 1975, allowed it to sidestep TiVo’s dilution claims. The company argued it had the right to use the derivatives of a mark it had held for decades.

But the board found Tivoli’s new marks legally distinct and unused when TiVo’s trademark became well known. The board recognized that trademark law doesn’t allow a famous mark to interfere with continuously existing marks, but a new mark has to be “essentially the same, or ‘legally equivalent’ to these marks.”

Administrative Trademark Judge Frances Wolfson, joined by Judges George C. Pologeorgis and Albert Zervas.

Cooley LLP represented TiVo. Myers Law Group LLC represented Tivoli.

The case is TiVo Brands LLC v. Tivoli LLC, TTAB, Opposition Nos. 91221632 and 91227791, 12/31/18

To contact the reporter on this story: Kyle Jahner in Washington at kjahner@bloomberglaw.com

To contact the editor responsible for this story: Keith Perine at kperine@bloomberglaw.com

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