Famous Mark

Certain trademarks can be designated as “famous marks,” which may entitle them to special protection, for example under United States Federal Trademark Dilution Act. Internationally famous marks (described as “well-known marks” in the TRIPS) are also treated differently in the context of additional national trademark registrations, in that the owner of such marks is regarded as having priority in trademark offices, even if someone has attempted to file before the international user. US law only allows for damages recovery for dilution for famous marks – what those famous marks are is supposed to be determined by the courts based on eight criteria:

  1. The duration and extent of use of the mark;
  2. The duration and extent of advertising for the mark;
  3. The geographic area in which the mark has been used;
  4. The degree of distinctiveness of the mark (either through the nature of the mark itself, or through “acquired distinctiveness”);
  5. The degree of recognition of the mark;
  6. The method by which the product was distributed and marketed;
  7. The use of the mark by third parties; and
  8. Whether the mark was a federally registered trademark.