Trademark Tuesdays: Dilution at the Hard Rock Hotel

MTV’s original reality show “The Real World” is coming back to Vegas (sidebar: They’ve already been there twice — wasn’t Detroit supposed to get a turn?). 8 years ago, the twentysomethings partied at the Palms hotel, but this time they’re headed to Vegas’ Hard Rock Hotel, according to the Las Vegas Review-Journal.

The Journal also notes that the Hard Rock Hotel is having some hard times of its own — it’s being sued by the Hard Rock Cafe for trademark dilution. Which might raise the question — what’s the difference between trademark infringement and trademark dilution?

Trademark infringement occurs when one company’s logo/slogan/etc. is likely to cause confusion about the source of the goods or services. For instance, check out this sign for a restaurant near my hometown of Royal Oak, Michigan:

Look familiar? If, among other factors, a consumer would be likely to believe that this coney island is part of the McDonald’s chain (it isn’t), then McDonald’s may have a valid case for trademark infringement.

Under U.S. law, though, sometimes a use isn’t infringement but it will still harm the image of a brand. The Federal Trademark Dilution Act allows trademark owners to sue even when there isn’t a likelihood of confusion. The owner just needs to show that someone else is using a similar mark in a way that is likely to dilute the brand. “Dilution” here is similar to dilution in the chemistry lab — a “watering down” of the original brand. For instance, if we were all allowed to use the Nike “swoosh” on our products, a consumer might not be confused into thinking Nike sponsored our products, but the “swoosh” would cease to be distinctive and unique to Nike.

A trademark can be diluted by “blurring” — the watering down of the mark so that it isn’t distinctive anymore — or by “tarnishing” — hurting the good reputation of the original mark holder. The primary case in this area involved Victoria’s Secret suing an adult lingerie and toy store called Victor’s Little Secret. Although VLS might not have confused people into believing it was owned by VS, Victoria’s Secret built its reputation on upscale, classy lingerie, an image that could be tarnished if it were to be associated with a shop that sells adult toys. Too, if any adult-oriented store could add “Secret” after it’s name, that would blur the distinctiveness of the Victoria’s Secret name.

So, what’s happening with Hard Rock Cafe vs Hard Rock Hotel? It’s a little more complicated, because for a long time HRH was operating with the permission of HRC under a license agreement. But, two things happened: HRH allegedly sub-licensed the use of the mark to other properties in a way not considered in the HRC-HRH contract (possible dilution by blurring) and HRC contracted with TruTV to hold the reality show show “Rehab: Party at the Hard Rock Hotel” in the hotel. In its complaint, HRC offers a list of negative incidents that have occurred at HRH because of the TV show (fights, etc.) and a list of consumer complaints such as, “Your executives might want to watch the first episode of season 3 of your show and see how bad this jackass is tarnishing your company’s name…” HRC alleges facts like these to support a claim for dilution by tarnishing.

Rock and roll was once something that was going to be the downfall of our society. Seems like things have mellowed over the years. What would a real rock and roller from back in the day have to say about a restaurant that charges $20 for a hamburger and gets upset when the name “Hard Rock” starts to become associated with drugs and sex?

See the complaint here, and other good blog posts on this matter here and here

Nicky D’s image from http://www2.wjbf.com/entertainment/2008/dec/02/you_decide_is_nicky_ds_infringing_on_a_mcdonalds_c-ar-222724/ which is perpetrating one of my biggest pet peeves: a news outlet confusing the meaning of “trademark” and “copyright.”

One response to “Trademark Tuesdays: Dilution at the Hard Rock Hotel

  1. Good article and have a broader understanding, Thank you.

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