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I feel prescient. Apple defends "Pod."

By Anthony Verna, Esq.

Back on July 20th, I wrote, "Think about a mark like "eBay" or "iPod." If someone started to make eBay brand home appliances, there would be a likelihood of confusion because "eBay" can only mean the website that sells goods by third parties in an auction format. The link is there in consumer consciousness."

Now here is the twist. Apple is claiming the word "pod" as its own trademark in all situations. The worry is that any use of "pod" in a trademark could dilute the "iPod" mark.

Let's start with what trademark dilution is. As I defined it on my trademark website of NYCTrademarks.com, "Trademark dilution ... is reserved for strong trademarks. Those trademarks with the strongest in identity in a market cannot be used in other noncompeting markets. This is to avoid "diluting" the strong, recognizable mark by its use in noncompeting markets.
"Dilution is best described in an example. A mark that is recognizable is 'Barbie.' The mark 'Barbie' brings up an idea of a girl's doll of an adult woman and friends in a pink box. Most likely, 'Barbie' would not be allowed to be used in another market, even if it did not compete with children's toys because of how strong the mark is and how identifiable the mark is to the goods."

I based this example from a real case, Mattel, Inc. v. MCA Records, Inc. 296 F.3d 894 (9th Cir. 2002)(the link opens a PDF file). In this case, the song "Barbie Girl" by the group Aqua was found to dilute Mattel's trademark in the word "Barbie." (One interesting question never propsed: What if the song wasn't called "Barbie Girl"?)

Dilution comes in when the defendant's use of a mark either blurs the connection in consumers' minds between the plaintiff's mark and the goods and services is weakened or the defendant's use tarnishes the plaintiff's mark. (Tarnishing means that the defendant's use is unsavory or unwholesome or the mark is used in connection with inferior products.)

The issue in any upcoming fights will be two-fold: Is "iPod" as a mark strong enough to warrant that it can be diluted and can any mark with "pod" in it dilute "iPod"?

Full post as published by Trademark, Copyright and Entertainment Law Forum on August 18, 2006 (boomark / email).