TTAB Clarifies When A Dilution Claimant's Mark Must Have Become Famous When Opposing Use-Based Applications

On March 31, 2016, the TTAB issued a precedential decision clarifying when a dilution claimant's mark must have become famous when opposing use-based applications.

The fraternity owned several U.S. registrations for its "Alpha Phi Omega" name and the Greek letters "ΑΦΩ." In 2010, it applied to register its "ΑΦΩ" mark for "headwear; jackets; shirts; [and] sweatshirts" on the basis of use, stating a first use date of 1980.

Omega owned several OMEGA marks (shown below) for various goods and services, including, watches, clothes (namely, scarves and neckties), and retail store services featuring watches and jewelry:

Omega opposed the fraternity's application on grounds of likelihood of confusion and likelihood of dilution by blurring. The Board denied the fraternity's motion for summary judgment finding there were genuine issues of material fact with respect to both claims.