The Toro Companyv.ToroHead, Inc.

Trademark Trial and Appeal Board

Dec 12, 2001

No. 91114061 (T.T.A.B. Dec. 12, 2001)

December 12, 2001
THIS OPINION IS CITABLE AS PRECEDENT OF THE T.T.A.B.
Paper No. 11
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

The Toro Company
v.
ToroHead, Inc.
_____

Opposition No. 114,061
to application Serial No. 75/372,652
filed on October 14, 1997
_____

Linda M. Byrne of Merchant & Gould P.C. for The Toro
Company.

Michael B. Einschlag for ToroHead, Inc.
______

Before Sams, Chief Administrative Trademark Judge and
Seeherman, Quinn, and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

An application has been filed by ToroHead, Inc.
(applicant) to register the mark “ToroMR” and bull’s head
design, shown below, for goods ultimately identified as
“very low reluctance, thin film magnetic reading and
writing heads for sale to OEM manufacturers of high
Opposition No. 114061
2
performance computer disk drives, in International Class
9.”1

Registration has been opposed by The Toro Company
(opposer) on the grounds that applicant’s mark so
resembles its marks for TORO for a variety of goods and
services, which have been previously used and registered
by opposer, as to be likely to cause confusion or mistake
or to deceive. Opposer’s registrations for the word TORO
in stylized or design form are set out below.2

1 Serial No. 75/372,652, filed October 14, 1997, based on an
allegation of a bona fide intention to use the mark in commerce.
2 Registration No. 529,845, issued August 29, 1950, for the mark
TORO (stylized) for “grass cutting machinery – namely engines
for power lawn mowers, self-propelled power plants for pulling
lawn mowers, hand lawn mowers and self-contained power mowers”;
third renewal;

Registration No. 755,846, issued September 3, 1963, for the mark
TORO for “turf tractors, utility cars, and motorized golf cars”;
first renewal;

Registration No. 769,393, issued May 12, 1964, for the mark TORO
for “underground sprinkling systems, including valves, sprinkler
heads, controls, and related equipment”; first renewal;

Registration No. 894,142, issued July 7, 1970, for the mark TORO
for “tires, drive belts, and fluid handling hose”; second
renewal;

Opposition No. 114061
3

Registration No. 944,516, issued October 10, 1972, for the mark
TORO for “trucks”; first renewal;

Registration No. 961,987, issued June 26, 1973, for the mark
TORO for “machines for grading, leveling, scarifying, slicing,
aerating, seeding, fertilizing, rolling, and raking”; first
renewal;

Registration No. 1,097,952, issued August 1, 1978, for the mark
TORO for “replacement spools and cutting line for vegetation
cutting apparatus”; first renewal;

Registration No. 1,109,798, issued December 26, 1978, for the
mark TORO for a chemical for making compost for domestic use,
machinery paint, metal pipes and tubes, wheel weights, chains of
links, non-electric control cables, cable clips, fastening
hardware – namely bolts, screws, nut rivets, cotter pins, ground
maintenance and earth moving machinery, apparatus for use in
conjunction with irrigation and snow removal, measuring gauges,
radiator caps, earth working tractors, pens, shipping tape,
umbrellas, starting cords, powered equipment repair services,
educational and instructional clinic services in the field of
machine repair and other goods and services in International
Classes 1, 2, 6, 7, 8, 9, 11, 12, 16, 17, 18, 22, 37, and 41;
first renewal;

Registration No. 1,137,331, issued July 1, 1980, for the mark
TORO for “vegetation cutting machine and parts thereof”; first
renewal;

Registration No. 1,150,168, issued April 7, 1981, for the mark
TORO for “lubricating oils and greases”; first renewal;

Registration No. 1,154,592, issued May 19, 1981, for the mark
TORO for “hand held and back pack debris blowers”; first
renewal;

Registration No. 1,156,106, issued June 2, 1981, for the mark
TORO (stylized) for grounds maintenance and light earth working
machinery in International Class 7; first renewal;

Registration No. 1,180,886, issued December 8, 1981, for the
mark TORO for “power cultivators, chain saws and their parts”;
Section 8 and 15 affidavits accepted and acknowledged;

Registration No. 1,205,656, issued August 17, 1982, for the mark
TORO for “rendering technical aid in the establishment and
operation of retail store services in the field of powered lawn
Opposition No. 114061
4

mowers, tillers, and snow throwers”; Section 8 and 15 affidavits
accepted and acknowledged;

Registration No. 1,224,513, issued January 18, 1983, for the
mark TORO for “financial services – namely, extending credit
services, credit union services, and administering an employee
stock purchase plan”; Section 8 and 15 affidavits accepted and
acknowledged;

Registration No. 1,287,819, issued July 31, 1984, for the mark
TORO and design for “underground irrigation systems comprising
controllers, valves, valve actuators, sprinkler heads, and parts
thereof”; Section 8 and 15 affidavits accepted and acknowledged;

Registration No. 1,456,174, issued September 8, 1987, for the
mark TORO and design for ground maintenance and light earth
moving machines in International Class 7; Section 8 and 15
affidavits accepted and acknowledged;

Registration No. 1,456,175, issued September 8, 1987, for the
mark TORO and design for ground maintenance and light earth
moving machines in International Class 7; Section 8 and 15
affidavits accepted and acknowledged;

Registration No. 1,530,931, issued March 21, 1989, for the mark
TORO (stylized) for clothing sold only to applicant’s employees
and customers; Section 8 and 15 affidavits accepted and
acknowledged;

Registration No. 1,681,922, issued April 7, 1992, for the mark
TORO for “water aeration unit comprising high-speed propeller
for drawing air into water”; Section 8 and 15 affidavits
accepted and acknowledged;

Registration No. 1,750,030, issued February 2, 1993, for the
mark TORO and design for “water aeration unit comprising high-
speed propeller for drawing air into water for commercial use”;
Section 8 and 15 affidavits accepted and acknowledged;

Registration No. 2,017,726, issued November 19, 1996, for the
mark TORO for “electrical lighting fixtures”;

Registration No. 2,021,069, issued December 3, 1996, for the
mark TORO for “fertilizers, soil amendments and trace mineral
supplements for commercial landscaping use”;

Registration No. 2,022,145, issued December 10, 1996, for the
mark TORO for “computerized consulting services relating to
Opposition No. 114061
5

Applicant denied the salient allegations of the
notice of opposition. In addition, on March 22, 2000,
opposer filed a motion to amend the notice of opposition
in two ways. The first amendment alleged that opposer
uses a common law mark MIR along with its registered mark
TORO for computerized satellite controllers for
irrigation systems. Amended Notice of Opposition, p. 2,
¶ 6. Secondly, opposer added a claim that the mark
“ToroMR” and bull’s head design is “likely to dilute the
distinctive quality of Opposer’s famous TORO mark.”

computerized controllers for underground automatic turf
irrigation systems”;

Registration No. 2,022,147, issued December 10, 1996, for the
mark TORO and design for “computerized consulting services
relating to computerized controllers for underground automatic
turf irrigation systems”; and

Registration No. 2,022,219, issued December 10, 1996, for the
mark TORO and design for “fertilizers, soil amendments and trace
mineral supplements for commercial landscaping use.”
Opposition No. 114061
6
Amended Notice of Opposition, p. 5, ¶ 18. Applicant did
not oppose the amendment of the notice of opposition. In
a Board order dated July 19, 2000, a decision on the
motion to amend was deferred until final hearing.
Opposer’s motion is granted. See the full discussion
thereof later in this opinion.
The Record
The record consists of the file of the involved
application; the trial testimony deposition, with
accompanying exhibits, of Don St. Dennis, managing
director of corporate communications of opposer; the
status and title copies of the 26 pleaded registrations
of opposer; applicant’s responses to opposer’s
interrogatories; opposer’s responses to applicant’s
interrogatories; and the trial testimony deposition, with
one exhibit, of Uri Cohen, president of applicant.
Both parties filed briefs and an oral hearing was
requested by opposer and scheduled. Subsequently, both
parties declined to appear at the oral hearing.
Priority
Priority is not an issue here in view of opposer’s
submission with its notice of reliance, as well as the
identification during the testimony of Don St. Dennis, of
status and title copies of the 26 noted registrations for
Opposition No. 114061
7
the mark TORO. See King Candy Co. v. Eunice King’s
Kitchen, 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Likelihood of Confusion
The first major issue we address is the question of
whether there is a likelihood of confusion. The Court of
Customs and Patent Appeals, one of the predecessor courts
of the Court of Appeals for the Federal Circuit, set out
a non-exclusive list of thirteen factors to be considered
when determining whether one mark is likely to cause
confusion with another mark. In re E.I. du Pont de
Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567
(CCPA 1973). We begin our discussion by analyzing the
applicant’s and opposer’s marks under the du Pont
factors.
(1) The similarity or dissimilarity of the marks in
their entireties as to appearance, sound,
connotation and commercial impression.

Opposer has numerous registrations for the mark TORO
in typed and stylized form and as part of a design. It
is well settled that it is improper to dissect a mark,
and that marks must be viewed in their entireties. In re
Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688
(Fed. Cir. 1993). However, more or less weight may be
given to a particular feature of a mark for rational
Opposition No. 114061
8
reasons. In re National Data Corp., 753 F.2d 1056, 1058,
224 USPQ 749, 751 (Fed. Cir. 1985).
Applicant’s mark includes the entire registered mark
TORO with the added letters MR and a design. Applicant’s
mark is depicted in a stylized form in which the initial
“T” is capitalized and the next three letters are in
lower case, followed by upper case letters “MR” to create
the term “ToroMR.” Also, applicant’s mark includes a
bull’s head design. The word TORO, the only word in
opposer’s mark, is thus prominently featured in
applicant's mark and it is the only pronounceable word in
applicant’s mark. Applicant admits that “MR” stands for
magnetoresistive (Cohen dep., p. 11). “Applicant agrees
with Opposer that the letters ‘MR’ must be pronounced
individually, and that Applicant’s use of capital letters
encourages such use.” Brief for Applicant, p. 16. Thus,
prospective purchasers are likely to pronounce the
letters “MR” at the end of applicant’s mark as individual
letters. Furthermore, applicant’s use of a special form
drawing actually highlights the word TORO in applicant’s
mark because it is clear that the word “toro” will be
perceived and pronounced separately from the letters
“MR.” Because of the prominence of the term TORO in both
marks and the lack of other significant differences, it
Opposition No. 114061
9
is the dominant part of applicant’s mark. In re Dixie
Restaurants Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531,
1534 (Fed. Cir. 1997) (The Federal Circuit held that THE
DELTA CAFE and design was confusingly similar to DELTA;
more weight given to the common dominant word DELTA).
See also Wella Corp. v. California Concept Corp., 558
F.2d 1019, 194 USPQ 419 (CCPA 1977)(CALIFORNIA CONCEPT
and design likely to be confused with CONCEPT for hair
care products).
Applicant argues that the marks have a different
connotation:
However, in Applicant’s case, the word Toro has a
suggestion and a connotation relating to toroidal
(relating to a shape of the thin film head)(Cohen,
p.11, lines 10-21). Further, the letters “MR” in
Applicant’s mark stands for magnetorestrictive which
is indicative of the manner in which information is
read into the thin film head (Cohen, p. 11, line 22
– p. 12, line 1).

Brief of Applicant, p. 17.
Even assuming that the term “ToroMR” and bull design
used on thin film head may have an alternative meaning
from the mark TORO on opposer’s products and services,
the marks are still similar in sound and appearance, and
the possible different meanings would not eliminate the
similarities of the marks. National Data, 753 F.2d at
1060, 224 USPQ at 749. This du Pont factor favors
opposer.
Opposition No. 114061
10
(2) The similarity or dissimilarity and nature of
the goods or services as described in an
application or registration or in connection
with which a prior mark is in use.

Applicant’s goods are identified as “very low
reluctance, thin film magnetic reading and writing heads
for sale to OEM manufacturers of high performance
computer disk drives.” Applicant’s witness describes
“thin film head” as:
a transducer that writes and reads the information
to the disk and from the disk. It is microscopic –
it’s a very, very tiny device, about a few
millimeters on each side. We manufacture it by
technology similar to integrated circuits.

Cohen dep. at 7.

“The thin film heads are marketed through contacting
some of the manufacturers, the disk drive manufacturers,
which are very few. In the United States, there are
probably about five or eight at the most, for disk
drives. I can name a few: IBM, Maxtor, Western Digital.
In the entire world, there are maybe less than ten or
about ten companies altogether.” Cohen dep. at 8 – 9.
The record establishes that applicant’s goods are highly
technical parts for computers that are sold to hard drive
original equipment manufacturers. These hard drives are
then incorporated into computers.
Opposer’s goods are numerous, and opposer summarizes
the many products and services with which the mark TORO
Opposition No. 114061
11
is associated as “a wide variety of professional lawn
mowers and consumer lawn mowers, irrigation systems,
computerized irrigation controllers, vehicles, work
vehicles, string equipment, blower vacuums, trimmers,
string trimmers.” St. Dennis dep. p. 15. Hence, we will
focus on this list in our discussion of the du Pont
factors.
We must compare the goods and services as described
in the application and the registrations to determine if
there is a likelihood of confusion. Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1493, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987). Opposer argues that its
goods are closely related to applicant’s goods and points
to its registrations for computer consulting services and
its computer-based irrigation and fertigation3 systems.
Br. at 16. However, there is certainly no rule that all
computer products and services are related. In re
Quadram Corp., 228 USPQ 863, 865 (TTAB 1985) (“[W]e think
that a per se rule relating to source confusion vis-a-vis
computer hardware and software is simply too rigid and
restrictive an approach and fails to consider the
realities of the marketplace”). See also Electronic

3 Fertigation refers to the application of nutrients using an
irrigation system by introducing the nutrients into the water
flowing through the system. St. Dennis dep., p. 19.
Opposition No. 114061
12
Design and Sales Inc. v. Electronic Data Systems, 954
F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992) (No confusion
between battery chargers and power supplies and computer
services). Here, applicant’s identification of goods is
specifically limited to parts used in high performance
computer hard drives sold to original equipment
manufacturers. Applicant’s goods are significantly
different and seemingly unrelated to any of the goods or
services of opposer. While opposer does sell highly
complicated computer-controlled irrigation systems, those
systems are distinctly different from applicant’s very
low reluctance, thin film magnetic reading and writing
heads. In Hasbro Inc. v. Clue Computing Inc., 66 F.
Supp.2d 117, 122, 52 USPQ2d 1402, 1406 (D. Mass. 1999),
aff’d, 232 F.3d 1, 56 USPQ2d 1766 (1st Cir. 2000), the
court held that it would be “an extraordinary stretch to
assert that Hasbro’s technical support to game users is
similar in any meaningful way to the ‘computer consulting
services’ provided by Clue Computing.” It would likewise
be an extraordinary leap to find that applicant’s thin
film heads sold to original equipment manufacturers are
related to opposer’s computerized irrigation systems or
other products or services in the context of our legal
analysis. Indeed, the CCPA has held in another case
Opposition No. 114061
13
involving the mark TORO that: “Toro cannot prevail
merely on the ground that ‘rubber element shaft
couplings’ may be contained in some of Toro’s machines.”
Falk Corp. v. Toro Manufacturing Corp., 493 F.2d 1372,
1378, 181 USPQ 462, 467 (CCPA 1974). It would be
untenable to find that the parties’ goods are related
merely because applicant sells parts for computer hard
drives that would be sold to hard drive manufacturers to
be used in hard drives that would in turn be sold to
computer manufacturers to be incorporated into computers
that would eventually be sold by opposer as part of its
computerized irrigation systems. Thus, this factor
favors applicant.
(3) The similarity or dissimilarity of established,
likely-to-continue trade channels.

Applicant’s product has not been sold (Cohen dep. at
23), but applicant’s president has indicated that it will
be marketed to the approximately ten companies in the
world that manufacture disk drives. Cohen dep. at 9.
The identification of goods specifically limits their
sale to original equipment manufacturers. Opposer has
indicated that it sells its products at retail stores
such as Home Depot and Lowe’s and through its dealer
network. There is no indication that applicant’s goods
and opposer’s goods or services will ever be sold in the
Opposition No. 114061
14
same channels of trade. Thus, this factor favors
applicant.
(4) The conditions under which and buyers to whom
sales are made, i.e. "impulse" vs. careful,
sophisticated purchasers.

Applicant’s goods clearly will be sold to buyers who
would be extraordinarily careful and sophisticated. The
testimony indicates that the goods will be marketed to
disk drive manufacturers who exercise the greatest care
in purchasing thin film heads.
It takes, at the very best, six months for those
manufacturers to evaluate the product, and then it’s
always a process back and forth. They come back and
they ask for certain improvements; they tell you
what’s wrong with your product; they come back,
request that you do some changes, and back and
forth, back and forth. At the very best, only six
months. It typically takes much longer than that.

And those are companies in the multibillion [dollar]
business, and it’s their main business. They know
exactly what they are buying. They don’t have any
doubt whatsoever as to what the product is and whom
they deal with.

Cohen dep. at 9.
On the other hand, opposer’s goods are sold to two
types of purchasers: professionals and residential
homeowners. Professionals include golf course
superintendents, golf course architects, sports field
groundskeepers, municipal facility managers of large
resorts and office buildings, and landscape contractors.
St. Dennis dep. at 11. Other customers include schools
Opposition No. 114061
15
and universities and agricultural customers. St. Dennis
dep. at 11 – 12. There is no evidence that would
indicate that opposer’s products would, generally
speaking, be purchased on impulse, whether it is a
lawnmower for a homeowner or an irrigation system for a
golf course. Because applicant’s customers would clearly
be sophisticated purchasers and opposer’s purchasers
would often be sophisticated, too; and because neither
party’s goods or services would normally be considered an
impulse purchase, the resolution of this factor favors
applicant.
(5) The fame of the prior mark.

With this factor, we look at what fame the mark has
achieved in the marketplace. “Thus, a mark with
extensive public recognition and renown deserves and
receives more legal protection than an obscure or weak
mark.” Kenner Parker Toys v. Rose Art Industries, 963
F.2d 350, 353, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). At
this point, we note that fame for likelihood of confusion
purposes and fame for dilution purposes are not
necessarily the same. A mark may have acquired
sufficient public recognition and renown to demonstrate
that it is a strong mark for likelihood of confusion
purposes without meeting the stringent requirements to
Opposition No. 114061
16
establish that it is a famous mark for dilution purposes.
I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 47, 49
USPQ2d 1225, 1239 (1st Cir. 1998) (“[T]he standard for
fame and distinctiveness required to obtain anti-dilution
protection is more rigorous than that required to seek
infringement protection”). Therefore, we will refer to
“public recognition and renown” when we are discussing
fame in the context of likelihood of confusion.
The evidence of public recognition and renown in
this case consists of opposer’s testimony that it has
over $1.3 billion in annual sales, that it spends $35 to
$40 million annually on advertising, and that it
advertises in trade journals, daily newspapers, national
publications, and on national television. St. Dennis
dep. at 43 – 44, and 49. Opposer has included a number
of its brochures and a videotape of television
commercials as exhibits to the St. Dennis deposition. As
a result of this evidence, and despite applicant’s
president’s testimony that he never heard of the Toro
Company or its marks (Cohen dep. at 12), we conclude that
opposer’s mark when used on lawn care and maintenance
equipment and services has achieved a degree of public
recognition and renown. The resolution of this factor
favors opposer.
Opposition No. 114061
17
(6) The number and nature of similar marks in use on
similar goods.

Applicant has not made of record any evidence that
there are similar marks in use on similar goods. Opposer
has testified that it is unaware of any use of TORO on
equipment, machinery, or computer-related products or
parts. St. Dennis dep. at 13. Therefore, this factor is
resolved in opposer’s favor.
(7) The nature and extent of any actual confusion.

Inasmuch as applicant has not used its mark (Cohen
dep. at 23), there can be no evidence of actual confusion
and this factor does not favor either party.
(8) The length of time during and conditions under
which there has been concurrent use without
evidence of actual confusion.

Because applicant has not used its mark (Cohen dep.
at 23), there is no period of time of concurrent use and,
therefore, this factor does not favor either party.
(9) The variety of goods on which a mark is or is
not used (house mark, “family” mark, product
mark).

Applicant has indicated an intent to use its mark on
a single product, thin film heads. Although opposer has
used the TORO mark on a number of products and services,
they are primarily goods and services related to lawn and
ground care and maintenance. Opposer has obtained 26
registrations for the word TORO in a typed drawing or
Opposition No. 114061
18
stylized letters or with a simple design for these
products and services. These products and services, as
opposer has admitted, are purchased by homeowners,
outdoor facilities managers, and agricultural interests.
St. Dennis dep. at 8 – 9. Because opposer’s goods and
services are primarily for lawn and ground care, the mark
is not used on a wide range of goods and services.
Moreover, all of applicant’s goods and services are
distinct from applicant’s identified goods. Accordingly,
the resolution of this issue favors opposer only
slightly.
(10) The market interface between applicant and the
owner of a prior mark:

(a) a mere “consent” to register or use.
(b) agreement provisions designed to preclude
confusion, i.e. limitations on continued use of
the marks by each party.
(c) assignment of mark, application,
registration and good will of the related
business.
(d) laches and estoppel attributable to owner of
prior mark and indicative of lack of confusion.

This factor is not an issue in this case.
(11) The extent to which applicant has a right to
exclude others from use of its mark on its
goods.

There is no evidence on this factor.
(12) The extent of potential confusion, i.e., whether
de minimis or substantial.

Opposition No. 114061
19
Because of the sophistication of the purchasers, the
highly technical nature of applicant’s goods, and the
limited number of potential purchasers, the extent of
potential confusion is slight, and the resolution of this
factor favors applicant.
(13) Any other established fact probative of the
effect of use.

Other than opposer’s assertion that it vigorously
enforces its trademark rights and the list of oppositions
it initiated without any indication of the results
(Exhibit 41, p. 17)4, there is little evidence on this
factor.

No Likelihood of Confusion

We now balance the du Pont factors and conclude that
there is no likelihood of confusion in this case.
Likelihood of confusion is decided upon the facts of each
case. Dixie Restaurants, 105 F.3d at 1406, 41 USPQ2d at
1533; Shell Oil, 992 F.2d at 1206, 26 USPQ at 1688. The

4 We note that Toro has met with mixed success at the CCPA and
at this Board. Falk Corp. v. Toro Mfg. Corp., 493 F.2d 1372,
181 USPQ 462 (CCPA 1974) (TORO not confusingly similar to
TORUS); Toro Co. v. Hardigg Industries, 549 F.2d 785, 193 USPQ
149 (CCPA 1977)(Res judicata issue; Hardigg not permitted to
reopen question of confusing similarity by changing its
identification of goods); Toro Manufacturing Corp. v. Gleason
Works, 475 F.2d 643, 177 USPQ 330 (CCPA 1973) (TORO not
confusingly similar to TOROID for gears); Toro Company v.
Opposition No. 114061
20
various factors may play more or less weighty roles in
any particular determination of likelihood of confusion.
Id.; du Pont, 476 F.2d at 1361, 177 USPQ at 567.
On the one hand, opposer’s and applicant’s marks are
similar in appearance and sound, and opposer’s mark has
achieved a degree of public recognition and renown for
goods and services related to lawn and ground care and
maintenance, and it may, therefore, be considered a
strong mark. On the other hand, there are differences in
the goods and services, the purchasers and the channels
of trade. Applicant’s purchasers would be highly
sophisticated purchasers who would exercise great care
when purchasing thin film heads. All of these factors
persuade us that there is no likelihood of confusion in
this case. We arrive at this conclusion mindful of the
requirement that a long
established principle of trademark law requires us to
resolve doubts about confusion against the newcomer.
Kenner
Parker Toys, 963 F.2d at 355, 22 USPQ2d at 1458. In
addition, we have weighed the evidence of the public
recognition and renown of opposer’s mark as a significant
factor in opposer’s favor because the Federal Circuit

Fleetwood Enterprises, 185 USPQ 828 (TTAB 1975) (TORO not
Opposition No. 114061
21
“has acknowledged that fame of the prior mark, another du
Pont factor, ‘plays a dominant role in cases featuring a
famous or strong mark.’” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 877, 23 USPQ2d
1698, 1701 (Fed. Cir. 1992), quoting, Kenner Parker Toys,
963 F.2d at 352, 22 USPQ2d at 1456. “Famous marks thus
enjoy a wide latitude of legal protection.” Recot, Inc.
v. Becton, 214 F.3d 1322, 1327, 54 USPQ2d 1894, 1897
(Fed. Cir. 2000) (FIDO LAY for edible dog treats
confusingly similar to FRITO-LAY snack foods).
Here, applicant is applying to register a mark that
is similar, but not identical, to opposer’s marks.
However, applicant’s goods are very specific parts of
hard drives that are sold to original equipment
manufacturers of high performance computer disk drives.
Purchasers of applicant’s goods and of opposer’s
computer-related products and services would not overlap.
For opposer’s other products, original equipment
manufacturers of high performance computer hard drives
are not likely to believe that thin film heads for hard
drives are somehow associated with opposer. It is
difficult even to see any overlap between purchasers of
applicant’s thin film heads and opposer’s lawn mowers,

confusingly similar to TAURUS).
Opposition No. 114061
22
irrigation systems, blower vacuums, string trimmers, and
other similar products and services. See Electronic
Design & Sales, 954 F.2d at 719, 21 USPQ2d at 1392-93
(“[O]pposer urges that persons who use opposer’s data
processing and telecommunications services at work and
who buy batteries at retail stores would be confused as
to source .... [T]he potential for confusion appears a
mere possibility not a probability”). Similarly, we hold
that there is no likelihood of confusion between
applicant’s mark and opposer’s marks when used on the
identified goods and services in the application and
registrations.5

5 Opposer has amended its notice of opposition to claim that
there is also a likelihood of confusion between the applicant’s
mark “ToroMR” and design and opposer’s use of its registered
mark TORO with the term MIR. Opposer alleges it uses this term
in advertising for its computerized satellite controllers for
its irrigation systems. Amended Notice of Opposition, p. 2, ¶
6. Opposer claims that MIR stands for “Motorola Infrared
Regulation.” St. Dennis dep. at p. 49. Motorola apparently
manufactures the computer and satellite components for opposer’s
satellite-controlled irrigation system. Exhibit No. 35, p. 2.
Applicant has not objected to this amendment. However, opposer
has introduced no evidence to show that this common law mark
TORO MIR was in use prior to the filing date of applicant’s
intent-to-use application. Therefore, opposer cannot prevail on
its claim of likelihood of confusion with its asserted common
law mark. Miller Brewing Co. v. Anheuser-Busch, Inc., 27 USPQ2d
1711, 1714 (TTAB 1993). Even if opposer established priority,
there would be no likelihood of confusion between opposer’s
components for its satellite-controlled irrigation systems and
Opposition No. 114061
23
Dilution
In the Trademark Amendments Act of 1999 (TAA),
Congress provided that opposition and cancellation
proceedings may be based on claims of dilution. See 15
U.S.C. §§ 1063(a) and 1064. We now turn to opposer’s
claim that applicant’s mark dilutes its famous trademark.
Opposer’s Motion to Amend the Notice of Opposition
On March 3, 2000, opposer’s testimony period began
and, on March 9, 2000, the deposition of opposer’s only
witness was taken. On March 27, 2000, opposer filed, as
noted earlier, a motion to amend its notice of
opposition, in relevant part, to allege that applicant’s
use of the mark “ToroMR” and design would dilute its
famous TORO marks. No opposition was filed by applicant
to opposer’s “Motion to Amend Notice of Opposition.”
Opposer’s testimony period closed on April 1, 2000.
Applicant’s testimony period began May 2, 2000, and
it took the deposition of its only witness on May 11,
2000. Applicant’s testimony period closed on May 31,
2000. As stated earlier, on July 19, 2000, the Board in
accordance with its usual practice entered an order,
inter alia, deferring a decision on opposer’s motion to
amend its notice of opposition until final hearing. See

applicant’s thin film heads because the potential purchasers and
Opposition No. 114061
24
Devries v. NCC Corp., 227 USPQ 705, 708 n.7 (TTAB 1985);
TBMP § 507.03(b). Opposer in its brief argues that
“Applicant’s mark dilutes Toro’s famous mark” (p. 18).
Applicant in its brief argues on the merits that its mark
“will not dilute Opposer’s mark” (p. 19). In its reply
brief, opposer notes that “Applicant has not objected to
the admission of the Amended Notice of Opposition” (p.
3).
“A notice of opposition or petition for cancellation
filed before enactment of the Trademark Amendments Act
may, assuming no prejudice to the defending applicant or
registrant, be amended to add a claim of dilution, so
long as the involved application or registration was
filed on or after January 16, 1996.” Polaris Industries
v. DC Comics, 59 USPQ2d 1798, 1800 (TTAB 2000); Boral
Ltd. V. FMC Corp., 59 USPQ2d 1701, 1703 (TTAB 2000).
Applicant’s intent-to-use application was filed on
October 14, 1997, more than one year after the Federal
Trademark Dilution Act of 1995 (FTDA) became effective.
Pub. L. No. 104-98, 109 Stat. 985. Applicant filed no
paper in opposition to opposer’s motion to amend the
notice of opposition. Trademark Rule 2.127(a) provides
that the Board may treat a motion as conceded if no

the channels of trade are distinct.
Opposition No. 114061
25
response is filed. Motions to amend pleadings in inter
partes cases are governed by Federal Rule of Civil
Procedure 15. Trademark Rules 2.107, 2.115, and
2.116(a). Motions to amend pleadings are liberally
granted unless the amendment would violate settled law or
be prejudicial to another party. Commodore Electronics
v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993).
Here, applicant has not raised any objection to the
Amended Notice of Opposition, it has responded to the
dilution claim on the merits in its brief, and it has not
raised any claim of prejudice by the dilution ground. We
are also unaware of any prejudice to applicant or any
other reason not to grant the motion to amend the notice
of opposition. Inasmuch as this opposition was also
tried as if the dilution claim was present, that fact
also supports granting opposer’s motion. Therefore, we
have granted the motion to amend. Fed. R. Civ. P. 15(b);
Colony Foods v. Sagemark, Ltd., 735 F.2d 1336, 222 USPQ
185 (Fed. Cir. 1984).
Opposer’s and Applicant’s Dilution Arguments
In its Amended Notice of Opposition, opposer alleges
that its mark is famous and became famous prior to
applicant’s first use of its mark, “ToroMR” and design,
and that use of applicant’s mark is likely to dilute the
Opposition No. 114061
26
distinctive quality of opposer’s famous mark TORO (p. 5).
In its brief, opposer alleges that applicant’s mark
dilutes opposer’s mark because opposer’s mark has
acquired considerable fame through extensive sales,
advertising and promotion, and it is recognized by
consumers as indicating the leading producer of landscape
irrigation, fertigation and beautification systems (p.
18). Further, opposer argues that the use of applicant’s
mark “ToroMR” will blur the distinctiveness of opposer’s
famous TORO mark.
The TORO mark has gained national and international
fame by the prominent use of TORO equipment at the
top national and international professional arenas,
as well as Toro’s advertisements at many prominent
outdoor sporting events. Toro has furthered the
recognition of the TORO mark by its national and
international promotional and marketing efforts.

Opposer’s Br., pp. 18 – 19 (citations omitted).
In addition, opposer maintains that it vigorously
enforces its trademark rights to prevent the dilution of
its mark.
In response, applicant argues that opposer has not
proven that its mark is distinctive, that opposer has
alleged fame in a specialized market that is different
Opposition No. 114061
27
from applicant’s market, and that the customers are
sophisticated.6
Opposer responds by, inter alia, arguing that the
goods of the parties are related, that its mark is
famous, and that it submitted numerous copies of
promotional materials to support the distinctiveness of
the mark (p. 2).
The Statute
The Federal Trademark Dilution Act of 1995 (FTDA)
provides that:
The owner of a famous mark shall be entitled,
subject to the principles of equity and upon such
terms as the court deems reasonable, to an
injunction against another person's commercial use
in commerce of a mark or trade name, if such use
begins after the mark has become famous and causes
dilution of the distinctive quality of the mark, and
to obtain such other relief as is provided in this
subsection.

15 U.S.C. § 1125(c)(1).

The FTDA defines “dilution” as:

the lessening of the capacity of a famous mark to
identify and distinguish goods or services,
regardless of the presence or absence of –
(1) competition between the owner of the famous
mark and other parties, or
(2) likelihood of confusion, mistake, or
deception.

6 Applicant also argues that opposer’s settlement offer
impeaches opposer’s claim that it vigorously defends its TORO
marks. Applicant’s reliance on an alleged settlement offer by
opposer is inexcusable and will not be given any consideration.
See Federal Rule of Evidence 408.
Opposition No. 114061
28
15 U.S.C. § 1127.

Board cancellation and opposition proceedings are
not exactly parallel to federal district court trademark
infringement proceedings inasmuch as there are no alleged
infringers and frequently no use by the applicants in
Board proceedings. In a court proceeding, in order for
an owner of an allegedly famous mark to prove its claim
of dilution, it must provide sufficient evidence that
(1) the other party’s use is in commerce,
(2) the other party adopted its mark after the
plaintiff’s mark became famous,
(3) the mark is famous, and
(4) the other party diluted the mark.
Syndicate Sales Inc. v. Hampshire Paper Corp., 192 F.3d
633, 639, 52 USPQ2d 1035, 1039-40 (7th Cir. 1999); Hasbro,
66 F. Supp.2d at 130, 52 USPQ2d at 1412. Some courts add
a fifth factor: Is the mark distinctive? Nabisco, Inc.
v. PF Brands Inc., 191 F.3d 208, 215, 51 USPQ2d 1882,
1886 (2d Cir. 1999). We will analyze these five factors
to determine how they apply to Board proceedings and
specifically to the facts of this case.
Before we begin our analysis of the facts in this
particular case, we note that courts have held that
dilution is an “extraordinary remedy.” Advantage Rent-A-
Opposition No. 114061
29
Car Inc. v. Enterprise Rent-A-Car Co., 238 F.3d 378, 381,
57 USPQ2d 1561, 1563 (5th Cir. 2001). “[W]e simply cannot
believe that, as a general proposition, Congress could
have intended, without making its intention to do so
perfectly clear, to create property rights in gross,
unlimited in time (via injunction), even in ‘famous’
trademarks.” Ringling Bros.-Barnum & Bailey Combined
Shows v. Utah Division of Travel Development, 170 F.3d
449, 459, 50 USPQ2d 1065, 1073 (4th Cir. 1999). See also
Nabisco, 191 F.3d at 224 n.6, 51 USPQ2d at 1894 n.6
(quotation marks omitted)(“We agree that the dilution
statutes do not prohibit all use of a distinctive mark
that the owners prefer not be made .... [W]e agree with
the Fourth Circuit that the dilution statutes do not
create a ‘property right in gross’”); I.P. Lund, 163 F.3d
at 47, 49 USPQ2d at 1239 (“[T]he standard for fame and
distinctiveness required to obtain anti-dilution
protection is more rigorous than that required to seek
infringement protection”). In light of the above
guidance, we start by noting that, unlike in likelihood
of confusion cases, we will not resolve doubts in favor
of the party claiming dilution.
First Dilution Factor:
The Other Party’s Use Is in Commerce

Opposition No. 114061
30
We begin our discussion with the factor that
requires that the use alleged to dilute a mark be
commercial and in commerce. 15 U.S.C. § 1125(c)(1). In
this case, applicant has not used its mark in commerce
(Cohen dep. at 23). We must, therefore, consider whether
a dilution claim can be raised against an application
that is based on an intent to use the mark in commerce.
Trademark applications may be filed based on an
intent to use a mark in commerce. 15 U.S.C. §
1051(b)(1). Such applications are often published for
opposition prior to the applicant’s using the mark in
commerce. Thus, many opposition proceedings involve
marks that are not actually used. If marks based on an
intent to use could not be opposed on the ground of
dilution, the intent of Congress to provide for the
“[r]esolution of the dilution issue before the Board, as
opposed to the Federal District Court, [and thereby]
result in more timely, economical, and expeditious
decisions” would be frustrated. H.R. REP. No. 106-250,
at 5 (1999). To require actual use by the applicant
before a dilution claim could be recognized at the Board
would, practically speaking, result in most dilution
claims being brought as cancellation proceedings or in
district court. Since the Board cannot issue
Opposition No. 114061
31
injunctions, once a party has begun using the mark in
commerce, it is much more likely that the focus will
shift to the Federal courts. This would defeat the
articulated purpose of the TAA. Therefore, we hold that
an application based on an intent to use the mark in
commerce satisfies the commerce requirement of the FTDA
for proceedings before the Board.7
Second Dilution Factor:
The Other Party Adopted its Mark
After the Plaintiff’s Mark Became Famous

Here, we must determine the point at which opposer’s
mark must be famous vis-à-vis when the applicant adopted
or used its mark. As we explained above, many opposition

7 We are aware of the split in the Circuit Courts on the issue
of whether actual dilution must be shown by the plaintiff to
prevail in a district court case involving a dilution claim.
Compare Ringling Bros.-Barnum & Bailey Combined Shows Inc. v.
Utah Division of Travel and Development, 170 F.3d 449, 50 USPQ2d
1065 (4th Cir. 1999) and Westchester Media v. PRL USA Holdings
Inc., 214 F.3d 658, 55 USPQ2d 1225 (5th Cir. 2000) (actual
dilution required) with Nabisco (2d Cir.) and Eli Lilly & Co. v.
Natural Answers Inc., 233 F.3d 456, 56 USPQ2d 1942 (7th Cir.
2000) (actual dilution not required). This question is
irrelevant to our determination here. The legislative history
shows that Congress intended to set up a dilution proceeding at
the Board in which an owner of a famous mark could prevail
“before dilution type damage has been suffered in the
marketplace by the owner of a famous mark.” H.R. REP. No. 106-
250, at 5 - 6 (1999). If we interpreted the TAA in a wooden
manner, most owners of famous marks would not be able bring
dilution claims at the Board against an application based on an
intent to use or even limited actual use. See, e.g., Federal
Express Corp. v. Federal Espresso Inc., 201 F.3d 168, 53 USPQ2d
1345 (2d Cir. 2000) (No injunctive relief available when there
was a tiny overlap of customers of plaintiff’s delivery service
and defendant’s coffee shops). Such an interpretation would
render the TAA virtually meaningless.
Opposition No. 114061
32
proceedings in which dilution claims are likely to be
raised will involve intent-to-use applications. Since
there is no actual use at all in these cases, the
question is: By what date must an owner of an allegedly
famous mark prove that its mark has become famous? There
are two potential answers: the filing date of the
intent-to-use application or at the time of trial.8
We hold that in the case of an intent-to-use
application, an owner of an allegedly famous mark must
establish that its mark had become famous prior to the
filing date of the trademark application or registration
against which it intends to file an opposition or
cancellation proceeding.9
The FTDA provides for injunctions against “another
person’s commercial use in commerce of a mark or trade
name, if such use begins after the mark has become
famous.” 15 U.S.C. § 1125(c)(1). The constructive use
provisions of the Trademark Act establish that:
Contingent on the registration of a mark on the
principal register provided by this Act, the filing
of the application to register shall constitute
constructive use of the mark, conferring a right of
priority, nationwide in effect ... against any other

8 This analysis assumes that the intent-to-use applicant has not
actually used the mark in commerce.
9 In a use-based application under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), the party alleging fame must show that
the mark had become famous prior to the applicant’s use of the
mark.
Opposition No. 114061
33
person except for a person ... who, prior to such
filing (1) has used the mark.

15 U.S.C. § 1057(c).

To harmonize the constructive use provisions with
the Board’s authority to resolve dilution issues, it
would
appear that an owner of an allegedly famous mark would
have
to show fame prior to the constructive use date;
otherwise the intent-to-use provisions would lose much of
their value. Accord WarnerVision Entertainment, Inc. v.
Empire Of Carolina Inc., 101 F.3d 259, 262, 40 USPQ2d
1855, 1857 (2d Cir. 1996)(“[A]s long as an ITU
applicant’s privilege has not expired, a court may not
enjoin it from making the use
necessary for registration on the grounds that another
party has used the mark subsequent to the filing of the
ITU application. To permit such an injunction would
eviscerate the ITU provisions and defeat their very
purpose”). In the same way, if an owner of a mark that
was not famous prior to an intent-to-use application’s
filing date could bring a dilution claim, it would
undermine the purposes of the Federal Trademark Law
Revision Act of 1988 (TLRA). The purposes of the intent-
to-use amendments to the Trademark Act were (1) to
Opposition No. 114061
34
harmonize United States practice with foreign practice by
permitting U.S. applicants to obtain a determination of
the registrability of their marks without expending the
energy and resources needed to begin using the mark, and
(2) to eliminate the token use practice that had
developed because of the use requirements of American
trademark law. See S. REP. No. 101-515, 100th Cong., 2d
Sess. (1988) set out in 6 McCarthy on Trademarks and
Unfair Competition (4th ed.):
This disparity between U.S. law and that of most
other countries results in foreign applicants having
an advantage over U.S. applicants in obtaining
trademark registration rights. (p. App. A5-8).

The Lanham Act’s preapplication use requirement also
creates unnecessary legal uncertainties for a U.S.
business planning to introduce products or services
into the marketplace. It simply has no assurance
that after selecting and adopting a mark, and
possibly making a sizeable investment in packaging,
advertising and marketing, it will not learn that
its use of the mark infringes the rights another
acquired through earlier use. (p. App. A5-9).

Token use is a contrived and commercially
transparent practice – nothing more than a legal
fiction .... [T]oken use becomes unnecessary and
inappropriate under the intent-to-use application
system. (pp. App. A5-9 – A5-10).

If intent-to-use applications do not receive the
benefit of their constructive use date for purposes of
dilution, applicants will be discouraged from filing
intent-to-use applications and encouraged to make token
use of their marks to protect them from non-famous marks
Opposition No. 114061
35
that acquire fame while their applications are pending.
We see no indication either in the language or
legislative history of the FTDA or TAA that Congress
intended this result that is so at odds with the TLRA.
Our interpretation of the Trademark Act as amended
by the FTDA, TAA, and the intent-to-use provisions would
maintain this status quo. The owner of a non-famous mark
in use prior to a constructive use date of an intent-to-
use applicant’s mark would be able to oppose the
registration of the application based on likelihood of
confusion. However, it could not base a dilution claim
in an opposition on fame acquired after the applicant’s
filing date.
In this case, applicant has not questioned opposer’s
evidence, much of which is dated after the filing date of
applicant’s intent-to-use application. Also, both
parties have conducted this opposition without any
guidance from the Board as to what the critical date for
establishing fame is. Here, we ultimately hold that
opposer’s mark has not been diluted. Our opinion would
not change whether we considered only the pre-application
filing date evidence or all the evidence. Because it
does not affect the outcome, we will not attempt to
determine what, if any, evidence is dated prior to
Opposition No. 114061
36
applicant’s filing date. Therefore, we will discuss all
the evidence.
Third Dilution Factor:
Fame and Distinctiveness

We will consider the fame and distinctiveness of a
mark at the same time. The FTDA has set out a non-
exclusive list of factors that should be considered when
determining whether a mark is famous and, thus, is the
type of mark for
which a claim of dilution is possible.10 We apply a
rigorous test to determine the fame and distinctiveness
of a mark. Avery Dennison Corp. v. Sumpton, 189 F.3d
868, 876, 51 USPQ2d 1801, 1806 (9th Cir. 1999), quoting,
S. REP. No. 100-515, at 42 (FTDA applies ‘only to those
marks which are both truly distinctive and famous’”).
In determining whether a mark is distinctive and
famous, a court may consider factors such as, but
not limited to –
(A) the degree of inherent or acquired
distinctiveness of the mark;
(B) the duration and extent of use of the mark
in connection with the goods or services
with which the mark is used;
(C) the duration and extent of advertising and
publicity of the mark;
(D) the geographical extent of the trading area
in which the mark is used;

10 There appears to be considerable overlap between the evidence
that would support each of the factors, particularly the
evidence supporting the degree of inherent and acquired
distinctiveness (Factor A) and the other factors, such as the
degree of recognition in trading areas (Factor F) and the
duration and extent of use and advertising (Factors B and C).
Opposition No. 114061
37
(E) the channels of trade for the goods or
services with which the mark is used;
(F) the degree of recognition of the mark in
the
trading areas and channels of trade used by
the mark’s owner and the person against
whom the injunction is sought;
(G) the nature and extent of use of the same or
similar marks by third parties; and
(H) whether the mark was registered under the
Act of March 3, 1881, or the Act of
February 20, 1905, or on the principal
register.

15 U.S.C. § 1125(c)(1).

We analyze these factors to determine whether
opposer’s TORO mark is distinctive and famous as required
by the FTDA,
as opposed to simply a mark that has acquired a degree of
public recognition and renown as indicated in the 5th
factor of the du Pont case for trademark likelihood of
confusion
analysis.
A. The Degree of Inherent or Acquired
Distinctiveness of the Mark

Here, we look at the degree to which a mark alleged
to be famous is distinctive. This requires us to look at
how “unique” the term is to the public. The simple
distinctiveness under Section 2(f) required for
registration on the Principal Register is not the test
for whether a mark is distinctive and a famous mark under
§ 43(c). Avery Dennison, 189 F.3d at 877, 51 USPQ2d at
Opposition No. 114061
38
1807; Washington Speakers Bureau Inc. v. Leading
Authorities Inc., 33 F. Supp.2d 488, 502, 49 USPQ2d 1893,
1905 (E.D. Va. 1999) (“[C]ourts have uniformly held that
to be capable of being diluted, a mark must have a degree
of distinctiveness and ‘strength’ beyond that needed to
serve as a trademark”) (citation and interior quotes
omitted), aff’d without published opinion, 217 F.3d 843
(4th Cir. 2000).
[D]istinctiveness plays a dual role. First, as
discussed above, it is a statutory element. A mark
cannot qualify for protection unless it is
distinctive. Second, the degree of distinctiveness
of the senior mark has a considerable bearing on the
question whether the junior use will have a diluting
effect. As the distinctiveness of the mark is the
quality that the statute endeavors to protect, the
more distinctiveness the mark possesses, the greater
the interest to be protected.

Nabisco, 191 F.3d at 217, 51 USPQ2d at 1888.

While we agree with those courts that hold that the
term “distinctive” is not a synonym for the word
“famous”11, it does not appear that the outcome of those
dilution cases turned on the courts’ considering
distinctiveness to be a separate factor. Therefore, our
decision to find that distinctiveness and fame are
separate concepts is based on the ordinary rules of

11 Other courts have found it is not a separate requirement.
Times Mirror Magazines Inc. v. Las Vegas Sports News L.L.C., 212
F.3d 157, 167, 54 USPQ2d 1577, 1584 (3rd Cir. 2000) (“[W]e are
Opposition No. 114061
39
statutory construction that require us to presume that
Congress did not use redundant language in legislation,
and that we should attempt to give meaning to all the
language Congress used. Platt v. Union Pacific Railroad,
99 U.S. 48, 58 (1878) (Legislature is presumed to have
“used no superfluous words”); Bailey v. United States,
516 U.S. 137, 146 (1995) (“We assume that Congress used
two terms because it intended each term to have a
particular, non-superfluous meaning”). That is
particularly the case here where the words do seem to
have non-identical meanings.
Such an interpretation of the statute makes sense.
To be vulnerable to dilution, a mark must be not only
famous, but also so distinctive that the public would
associate the
term with the owner of the famous mark even when it
encounters the term apart from the owner’s goods or
services, i.e., devoid of its trademark context. H.R.
REP. No. 104-374, at 3 (1995) (“the mark signifies
something unique, singular, or particular”). Also,
courts have indicated that a mark can be famous but not
particularly distinctive. See, e.g., Sporty’s Farm
L.L.C. v. Sportsman’s Market Inc., 202 F.3d 489, 497, 53

not persuaded that a mark be subject to separate tests for fame
Opposition No. 114061
40
USPQ2d 1570, 1576 (2d Cir. 2000) (“[E]ven a famous mark
may be so ordinary, or descriptive as to be notable for
its lack of distinctiveness”); TCPIP Holding Co. v. Haar
Communications Inc., 244 F.3d 88, 96, 57 USPQ2d 1971,
1975 (2d Cir. 2001) (footnote omitted) (“Some of the
holders of these inherently weak marks are huge
companies; as a function of their commercial dominance
their marks have become famous. It seems unlikely that
Congress could have intended that the holders of such
non-distinctive marks would be entitled to exclusivity
for them throughout all areas of commerce”). Also, a
mark can be a famous mark in a particular field but not
be distinctive outside that field. If the same mark is
used by others on a wide variety of unrelated products,
the mark may be famous for a particular item but not very
distinctive. See Syndicate Sales, 192 F.3d at 640, 52
USPQ2d at 1041 (“For example, a mark may be highly
distinctive among purchasers of a particular type of
product”). Thus, the more tenuous the connection between
the mark by itself and a single source, the less likely
that the mark is truly famous and distinctive.
If the owner of a mark claiming dilution cannot
establish a direct and immediate connection between the

and distinctiveness”).
Opposition No. 114061
41
mark and itself because the mark is not very distinctive,
the less likely dilution can be proven. The mark CLUE
may have significant recognition and renown to the extent
that purchasers of board games would be very familiar
with it. But it was found to be not very distinctive in
the marketplace in general. Hasbro, 66 F. Supp.2d at
131, 52 USPQ2d at 1413 (“Clue” found to be a common word
with many meanings and “defendant’s use of the word
‘clue’ is entirely consistent with the common usage of
the word”).
Thus, we view fame and distinctiveness as two
overlapping, but slightly different, concepts. Since
marks can be famous in a particular area as well as
across a broad spectrum, we look to the degree of
distinctiveness to determine the degree of fame. If a
term has achieved fame, but the evidence of
distinctiveness indicates that there are numerous other
uses of the term, the fame of the mark may be limited.
Hasbro, 66 F. Supp.2d at 132, 52 USPQ2d at 1413-14
(“[M]arks consisting of relatively common terms and with
use of the same terms by third parties ... not
sufficiently famous to warrant FTDA protection”).
Therefore, in addition to looking at whether a mark is
inherently distinctive, we will also look at the degree
Opposition No. 114061
42
of distinctiveness a mark alleged to be famous has
acquired. See Citigroup Inc. v. City Holding Co., No. 99
Civ. 10115, 2001 U.S. Dist. LEXIS 17653, at *20 (S.D.N.Y.
November 1, 2001) (“In addition to inherent
distinctiveness, the CITI family of marks has, through
extensive advertising and promotion over the decades,
garnered extraordinary acquired distinctiveness”).
In this case, the TORO mark is inherently
distinctive for purposes of registration on the Principal
Register. It is registered on the Principal Register
without any claim of acquired distinctiveness.12
Nonetheless, both parties admit that the term “toro”
means “bull.” Cohen dep. p. 23; St. Dennis dep. at 14.
The term “toro” is not a coined word, most especially to
the millions of purchasers in America who are familiar
with the Spanish language. Indeed, there is some
indication that the term “toro” has entered the English
language. Webster’s Third New World Dictionary of the
English Language Unabridged (1993) 2412 (“toro – 1.

12 The fact that a mark is registered on the Principal Register
would favor the party claiming that the mark is famous. Las
Vegas Sports News, 212 F.3d at 166, 54 USPQ2d at 1583 (FTDA Fame
Factor H). Failure to register may be a factor counted against
a party claiming that the mark is famous. Washington Speakers,
33 F. Supp.2d at 504, 49 USPQ2d at 1907.
Opposition No. 114061
43
Chiefly Southwest: BULL”).13 While the term “toro” or
“bull” may have some suggestive connotations of strength,
it does not appear to have any specific meaning in
relation to opposer’s products and services. Opposer’s
witness testified that no one making machinery, computer-
related products, or computer-related parts uses the mark
TORO. St. Dennis dep. at 13. Although applicant has put
in no evidence of third-party usage, its witness asserted
that: “’toro’ comes from the toroidal head. In the
patents, we already refer to our heads as toroidal heads;
and this is the particular shape of the head.” Cohen
dep. at 11.
In this case, while opposer has provided some
evidence as to the distinctiveness of its mark, there is
no direct evidence of consumer recognition of the mark as
pointing uniquely to opposer. Also, there is evidence
that “toro” is not a coined word, and that it has a
suggestive meaning with respect to applicant’s goods.
B. The Other Fame Factors
Opposer has submitted evidence that indicates it has
used its mark TORO since 1914; that it has 3000 dealers
worldwide, including approximately 2500 in the United

13 We take judicial notice of this definition. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ
Opposition No. 114061
44
States; that it has annual sales of $1.3 billion; and
that
it uses its mark TORO on all its products and services.
St. Dennis dep. at 12, 33, 43, 44, and 49. Opposer’s
goods and services are described as “a wide variety of
professional lawn mowers and consumer lawn mowers,
irrigation systems, computerized irrigation controllers,
vehicles, work vehicles, string equipment, blower
vacuums, trimmers, string trimmers.” St. Dennis dep. at
15.
In addition, opposer’s witness has testified that
TORO is often the dominant brand in its various markets.
Well, it’s the number one brand in just about every
market in which we compete. It’s, for example, in
the golf business, 75 out of the top 100 courses,
for example, are TORO courses using TORO equipment
and TORO irrigation. In the sports field, for
example, we probably have 80 percent of the NFL and
major league baseball stadiums. That type of
awareness is representative of the brand awareness
in the professional and the consumer market.

St. Dennis dep. at 8.
Mr. St. Dennis goes on to report that TORO equipment
was used at the Ryder Cup in golf (p. 9); that opposer
spends $35 – 40 million on advertising annually (p. 49),
and that approximately 66% of its revenue is derived from
sales to professionals and the remainder from sales to

594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed.
Opposition No. 114061
45
residential homeowners (p. 11). The record contains
numerous brochures and a videotape of television
commercials that opposer uses to promote its products and
services. Finally, opposer submitted testimony that it
advertises in a variety of publications, including
newspapers such as the Los Angeles Times, national
publications such as Better Homes and Gardens, and state
and city magazines such as Minneapolis-St. Paul Magazine.
St. Dennis dep. at 43. Applicant has
not submitted any evidence to contradict opposer’s
evidence of fame.14
We now apply this evidence to the factors concerning
the duration and extent of use (FTDA Fame Factor B) and
advertising (Factor C) and the channels of trade for
opposer’s goods and services (Factor E). “With respect
to the duration and extent of use, generally a famous
mark will have been in use for some time.” H.R. REP. No.
104-374, at 7 (1995). Opposer has used its mark for
years on a wide variety of lawn care, landscaping,
irrigation and similar products and services. Its sales,

Cir. 1983).
14 Applicant’s president did testify that he was not familiar
with the TORO mark. Cohen dep. at 12 (Question: “When you
chose that name [ToroHead] were you aware of the Toro mark or
marks of The Toro Company?” Answer: “No, I was not.”).
Opposition No. 114061
46
though not set out by category of products and services,
are substantial.
Similarly, it is not contested that opposer has
advertised its products and services in different types
of publications and media. “Toro spends $35 – 40 million
on annual advertising.” (St. Dennis dep. at 49).
However, there is no breakdown of advertising figures by
products and services or by type of media.
Opposer’s evidence of duration and extent of use and
advertising is the type of evidence that would help
establish that a mark is a strong mark for likelihood of
confusion purposes or to show fame in a niche market, but
it
is much less persuasive to establish that its mark is
truly famous and distinctive and entitled to the broad
scope of protection provided by the FTDA. As discussed
more fully
below, opposer cannot prevail unless it can establish
that the TORO mark is a mark that is entitled to this
type of FTDA protection.
We also look at the geographic extent of its trading
areas (FTDA Fame Factor D), and its recognition in its
trading areas (Factor F). As to the geographic trading
areas, the legislative history points out: “The
Opposition No. 114061
47
geographic fame of the mark [Factor D] must extend
throughout a substantial portion of the U.S.” H.R. REP.
No. 104-374, at 7 (1995). It is undisputed in this case
that if opposer’s mark is famous, it is famous throughout
the United States.
Regarding Factor F, as we discussed previously,
opposer’s mark is used on lawn care, irrigation,
landscaping and similar products and services. Opposer
has submitted evidence that would indicate that, at least
with respect to professional groundskeepers of sports
venues and other fields, opposer has achieved recognition
through its dominance in the field and through its
association with golf courses, golf tournaments, and
major league sporting events. But there is little
evidence of opposer’s fame among applicant’s potential
customers. These customers would be original equipment
manufacturers of high performance computer disk drives
that purchase thin film heads.
C. Is Opposer’s Mark Famous?
We must now consider, based on the factors discussed
above, whether opposer’s TORO mark is famous for FTDA
purposes.15 Opposer’s mark has achieved some

15 Relying on the panel decision in Anastasoff v. United States,
223 F.3d 898 (8th Cir. 2000), opposer has asked the Board to
consider a non-precedential Board decision involving its
Opposition No. 114061
48
distinctiveness because opposer’s witness has testified,
and applicant has not shown otherwise, that other parties
do not use the mark TORO on machinery, equipment, or
computer-related products. St. Dennis dep. at 13. Also,
there is no indication that opposer’s use thereof is
anything but national in scope. It has 26 Federal
registrations, it has spent considerable sums on
advertising, and it has made substantial sales of a
variety of goods and services in the lawn care,
irrigation, landscaping, and similar fields. At least
regarding professional groundskeepers and others involved
with maintaining sports fields or other fields, it has
demonstrated considerable recognition of its TORO mark.
However, it has presented little evidence of
widespread recognition outside its specific trading
fields. We find that the recognition of the TORO mark
among professional groundskeepers does not equate to
recognition among ordinary consumers. There is little
evidence that any significant number of people attending
golfing or other sporting events would even be aware of

litigation with a different party and the fame of its mark.
Subsequently, the Anastasoff panel decision was vacated. 235
F.3d 1054 (8th Cir. 2000) (en banc) (nonprecedential).
Therefore, we will not consider the nonprecedential Board
decision referred to by opposer. See General Mills Inc. v.
Health Valley Foods, 24 USPQ2d 1270 (TTAB 1992); In re American
Olean Tile Co., 1 USPQ2d 1823 (TTAB 1986).
Opposition No. 114061
49
the TORO mark, other than if they checked a website or
saw a display at the event. St. Dennis dep. at 9-10 (At
the Ryder Cup golf tournament, “there is widespread use
of the TORO logo ... and we were on their web site
throughout the duration of the Ryder Cup”). We have no
indication of how many people are aware of this
association between opposer and the sporting event, or of
how this association increased the TORO mark’s
distinctiveness in the minds of prospective purchasers.
Traditionally, identical marks owned by different parties
have been able to co-exist when they are used on
unrelated products. Even if, as opposer asserts (Br. at
4), its lawn care products are leading brands, this fact
does not establish that the mark is truly famous, such
that when the public encounters the mark on unrelated
goods, this use would immediately call to mind opposer’s
mark. We have little evidence of how famous the mark is
among potential purchasers of opposer’s consumer products
beyond evidence relating to advertising and sales
figures. Finally, we have no evidence that purchasers of
thin film heads are also potential purchasers of
opposer’s goods and services or are even familiar with
opposer’s mark.
Opposition No. 114061
50
We conclude that while opposer has established that
its mark has achieved some public recognition and renown,
the record does not contain the evidence needed to
demonstrate that the mark is a member of the “select
class of marks – those with such powerful consumer
associations that even non-competing uses can impinge on
their value.” Avery Dennison, 189 F.3d at 875, 51 USPQ2d
at 1805. Fame for FTDA purposes cannot be shown with
general advertising and sales figures and unsupported
assertions of fame by the party.
Avery Dennison argues that evidence of extensive
advertising and sales, international operations, and
consumer awareness suffices to establish fame. We
agree that the remaining four statutory factors in
the famousness inquiry support Avery Dennison’s
position. Both “Avery” and “Dennison” have been
used as trademarks for large fractions of a century
and registered for decades. Avery Dennison expends
substantial sums annually advertising each mark with
some presumable degree of success due to Avery
Dennison’s significant volume of sales. In
addition, Avery Dennison markets its goods
internationally. See 15 U.S.C. Section 1125(c)(B)-
(D), (G). However, we disagree that Avery
Dennison’s showing establishes fame.

Avery Dennison, 189 F.3d at 878-79, 51 USPQ2d at 1808.
See also In re Pennzoil Products Co., 20 USPQ2d 1753,
1760 (TTAB 1991) (No link established between substantial
sales and advertising figures and public recognition of
the trademark significance of the applicant’s mark).
Opposition No. 114061
51
While the eight statutory factors are a guide to
determine whether a mark is famous, ultimately we must
consider all the evidence to determine whether opposer
has met its burden in demonstrating that the relevant
public recognizes the TORO mark as “signifying something
unique, singular, or particular.” H.R. REP. No. 104-374,
at 3 (1995). Because famous marks can be diluted by the
use of similar marks on non-competitive goods and
services, the owner of a famous mark must show that there
is a powerful consumer association between the term and
the owner.
In likelihood of confusion cases, a party asserting
that its mark is strong frequently introduces evidence of
its efforts and expenditures in promoting its products.
This type of evidence is often persuasive in those cases
to demonstrate that the mark has acquired public
recognition and renown. In a dilution case, this would
only be the beginning of establishing that the mark is
famous. Parties claiming their marks are famous must
establish conclusively that the advertising has
succeeded.
Every day consumers are bombarded with hundreds, if
not thousands, of advertisements for hundreds of products
on television, radio, the Internet, signs, and in
Opposition No. 114061
52
publications. A great many of these ads do not make a
significant impression on the public in general. Here,
opposer has submitted evidence of the type of television
ads and brochures that it has produced and the amount of
money it has recently spent on advertising, but we have
no evidence of how the relevant purchasers view the term.
Because of the lack of such evidence, we cannot find that
relevant purchasers immediately associate the term TORO
with opposer and, therefore, we cannot find that it is a
famous mark among the general public. See, e.g., I.P.
Lund, 163 F.3d at 47, 49 USPQ2d at 1240 (Faucet design
was not famous, despite being featured and advertised in
national magazines and displayed in museums).
The Second Circuit noted that an owner of an
allegedly famous mark had “spent ‘tens of millions of
dollars’ advertising its mark, but [it] does not tell ...
when expended or how effectively. Nor did [it] submit,
consumer surveys, press accounts, or other evidence of
fame.” TCPIP Holding, 244 F.3d at 99, 57 USPQ2d at 1978.
Similarly, opposer does not provide evidence of how
effective its advertising has been.
At this point, it may be useful to expand our
comments and explain why a mark that has been used for
such a long period of time, on a variety of products,
Opposition No. 114061
53
with a large amount of sales and advertising, has not
been found to be a famous mark for FTDA purposes.
Fame for dilution purposes is difficult to prove.
Advantage Rent-A-Car, 238 F.3d at 381, 57 USPQ2d at 1563
(“Enterprise did not prove that its slogan [WE’LL PICK
YOU UP] was sufficiently ‘famous,’ even within the car
rental market”). The party claiming dilution must
demonstrate by the evidence that its mark is truly
famous. I.P. Lund, 163 F.3d at 48, 49 USPQ2d at 1227.
In effect, an owner of a famous mark is attempting to
demonstrate that the English language has changed. Words
can be common nouns or proper nouns, such as geographic
terms or surnames. Occasionally, new words are added to
the English language. Traditionally, multiple uses of a
term as a trademark can co-exist when used for non-
related goods and/or services. This is a bedrock
principle of trademark law. With the advent of the FTDA,
this traditional balance has been upset. Now, the owner
of a famous mark can prohibit the use or registration of
the same or substantially similar mark even on unrelated
goods and/or services. However, to accomplish this
successfully, the mark’s owner must demonstrate that the
common or proper noun uses of the term and third-party
uses of the mark are now eclipsed by the owner’s use of
Opposition No. 114061
54
the mark. What was once a common noun, a surname, a
simple trademark, etc., is now a term the public
primarily associates with the famous mark. To achieve
this level of fame and distinctiveness, the party must
demonstrate that the mark has become the principal
meaning of the word.16 For example, the mark DUPONT was
recognized as a mark that could be protected under the
FTDA and would not be treated as merely a surname. H.R.
REP. No. 104-374, at 3 (1995) (“[T]he use of DUPONT shoes
... would be actionable under this legislation”). On the
other hand, the plaintiff in the Hasbro case could not
show that the English language had changed, and that
purchasers associated the common word CLUE in the
abstract with the producer of the board game.
Therefore, an opposer relying on the FTDA to provide
the broadest protection for its mark against totally
unrelated goods, as in this case, must provide evidence
that when the public encounters opposer’s mark in almost
any context, it associates the term, at least initially,
with the mark’s owner. If this were not the case, then
almost any fanciful mark could easily show fame because,

16 We do not attempt to fix a percentage that would establish
that a mark is famous and distinctive. See Las Vegas Sports
News, 212 F.3d at 175, 54 USPQ2d at 1590 (Barry, J., dissenting)
(discussing attempts by commentators to fix a specific
percentage cutoff for consumer recognition).
Opposition No. 114061
55
by definition, it is a new word, even if few people
recognize it. While it may be easier for a fanciful mark
to crowd out other uses, it still must be shown to be
famous and distinctive. Eli Lilly & Co. v. Natural
Answers Inc., 233 F.3d 456, 466, 56 USPQ2d 1942, 1949 (7th
Cir. 2000)(“The strongest protection is reserved for
fanciful marks that are purely the product of imagination
and have no logical association with the product”).
Examples of evidence that show the transformation of
a term into a truly famous mark include:
1. Recognition by the other party. Federal
Express, 201 F.3d at 177, 53 USPQ2d at 1346.
2. Intense media attention. Eli Lilly, 233 F.3d at
459 and 469, 56 USPQ2d at 1943 and 1951 (PROZAC
appearing twice on the cover of Newsweek;
identified in Fortune magazine as one of the top
six “health and grooming products of the 20th
century,” subject of two bestsellers and
television news and talk shows).
3. Surveys. Grupo Gigante S.A. de C.V. v. Dallo &
Co., 119 F. Supp.2d 1083, 1099 (C.D. Cal. 2000)
(Survey considered, but not persuasive).
Although opposer has not submitted evidence of this
type, it has provided evidence that its products are the
Opposition No. 114061
56
overwhelming choice of top sports venues, and that it is
often the dominant brand in the fields, both professional
and consumer, in which it competes. While a party may be
able to demonstrate that a mark is truly famous by
evidence that a large percentage of the general public or
the specific industry purchases the goods or services
offered under the plaintiff's mark, opposer has not done
that here in terms of showing fame in general. Opposer's
evidence shows that its mark has achieved fame in the
limited market of professional sports venues. This may
be enough to demonstrate niche market fame, as discussed
infra. However, many of opposer's goods are sold as
general consumer products.
With respect to consumer products and services, the
fact that a party's mark may have achieved fame for those
particular goods and services does not establish that the
mark has achieved a general fame. Merely providing
evidence that a mark is a top-selling brand is
insufficient to show this general fame without evidence
of how many persons are purchasers.17 There is a

17 In all these cases, the questions of fame and dilution are
heavily fact-dependent. Even evidence that one out of every
seven households in the United States was a customer of the
owner of the mark and that millions of additional households had
been solicited did not result in a finding that plaintiff’s CITI
marks were diluted by defendant’s CITY mark. Citigroup, 2001
U.S. Dist. LEXIS 17653, at *26.
Opposition No. 114061
57
difference between goods and services such as soft
drinks, restaurant services, and pain relievers, which
are purchased by a sizeable percentage of the general
population on a regular basis,18 and lawn movers or string
trimmers, whose use and purchase are less universal.
Opposer has not included any evidence of what percentage
of households are customers of its products.
Obviously, we are setting no limits on the types of
evidence a party can use to show fame, nor are we
requiring any specific type of evidence. But in order to
prevail on the ground of dilution the owner of a mark
alleged to be famous must show a change has occurred in
the public’s perception of the term such that it is now
primarily associated with the owner of the mark even when
it is considered outside of the context of the owner’s
goods or services. In this case, although opposer has
provided some evidence of sales and advertising, we
cannot conclude from the evidence that the public
associates the term “Toro” with opposer in nearly every
context. Opposer’s evidence of fame is insufficient to
show that its mark is a truly famous mark.
Niche Market Fame

18 Even a large, occasional purchase such as a car, which is
used by the general population on a daily basis, is a different
type of consumer product than applicant’s goods.
Opposition No. 114061
58
The next question concerns the possibility that fame
exists among a particular group. Normally, famous marks
are famous to everyone. The legislative history of the
FTDA gives examples of BUICK, KODAK, and DUPONT as
household terms with which almost everyone is familiar.
The use of these marks on very dissimilar products would
give rise to a claim of dilution. Here, opposer’s
evidence does not establish that TORO is a famous mark
among the public in general, and that the public would
associate the term TORO with opposer regardless of the
products or services with which the mark is used.
However, courts have come to recognize that fame in
specialized markets can cause dilution. This has become
known as “niche” market fame. Las Vegas Sports News, 212
F.3d at 164, 54 USPQ2d at 1581 (quoting Restatement
(Third) of Unfair Competition, § 25, comment e (1995))
(“A mark that is highly distinctive only to a select
class or group of purchasers may be protected from
diluting uses directed at that particular class or
group"); Washington Speakers, 33 F. Supp.2d at 503, 49
USPQ2d at 1906) (“[T]he language of the FTDA itself lends
some support to the idea that marks famous in niche
markets can be protected from diluting uses directed at
the same narrow market”).
Opposition No. 114061
59
Opposer seems to argue that its mark has achieved
niche market fame when it alleges that: “The Toro mark
is a famous mark, recognized by consumers to indicate the
leading producer of landscape irrigation, fertigation,
and beautification systems.” Opposer’s Brief at 18.
This argument relies on the fame that opposer has
achieved with its success in the area of golf course and
other sports venue maintenance. These sales are directed
to its professional customers (St. Dennis dep. at 11) and
would indicate, at best, fame in a very specific area,
that is, niche fame. Applicant points out that its
market (selling thin film heads to original equipment
manufacturers of disk drives for computers) is “far
different from the specialized market segment in which
the Opposer operates.” Applicant’s Brief at 20 - 21.
For the purpose of this discussion, we accept,
without deciding, the proposition that fame in a niche
market is a proper basis for alleging dilution under the
FTDA. With niche market fame, a mark may achieve
extraordinary fame in a particular field so that nearly
everyone in that field recognizes the mark in the
abstract, that is, divorced from its associated goods or
services. If another party uses the mark on unrelated or
related products marketed in the same field, dilution may
Opposition No. 114061
60
be possible. However, even if niche market fame could
result in dilution, it does not assist opposer in this
case. If a mark is not famous to purchasers at large,
but only to a specific group, fame is not relevant unless
somehow the goods or services with which the allegedly
diluting mark is used are in the same market. Here, the
specialized fields of the parties are distinct, and even
if opposer’s goods have achieved fame in the area of
landscaping and sports venue maintenance, that fame would
not be diluted by applicant’s use of its mark in the
field of thin film heads sold to original equipment
manufacturers.
[A] closer look indicates that the different lines
of authority are addressing two different contexts.
Cases holding that niche-market fame is insufficient
generally address the context in which the plaintiff
and defendant are using the mark in separate
markets. On the other hand, cases stating that
niche-market renown is a factor indicating fame
address a context in which the plaintiff and
defendant are using the mark in the same or related
markets.

Syndicate Sales, 192 F.3d at 640, 52 USPQ2d at 1040-41
(footnotes omitted).
We have no doubt that if this opposer (or almost any
opposer for that matter) defined its market narrowly
enough, it would eventually be able to show fame in some
limited market. However, we will not consider whether
the mark has niche market fame unless the party alleging
Opposition No. 114061
61
fame has demonstrated the trading fields overlap. Here,
opposer has not done this.
Fourth Dilution Factor:
The Mark Will Be Diluted

Under the FTDA, dilution occurs when the capacity of
a famous mark to distinguish goods and services is
lessened. 15 U.S.C. § 1127. “It applies when the
unauthorized use of a famous mark reduces the public’s
perception that the mark signifies something unique,
singular, or particular.” H.R. REP. No. 104-374, at 3
(1995). Dilution diminishes the “selling power that a
distinctive mark or name with favorable associations has
engendered for a product in the mind of the consuming
public.” Sally Gee, Inc. v. Myra Hogan, Inc., 699 F.2d
621, 624-25, 217 USPQ 658, 661 (2d Cir. 1983).
Dilution can occur through blurring or tarnishment.
Tarnishment and blurring have emerged as the two
main ways by which federal courts have found
dilution .... Blurring occurs when one or more
identical or similar marks are used on dissimilar
products without authorization so that the
distinctiveness of the famous mark is eroded.

H.R. REP. No. 106-250, at 5 (1999).

Opposer only alleges dilution by blurring in this
case. Courts have noted that blurring protects trademark
owners from:
The erosion of distinctiveness and prestige of a
trademark caused by the sale of other goods or
Opposition No. 114061
62
services under the same name ... or simply a
proliferation of borrowings that, while not
degrading the original seller’s mark, are so
numerous as to deprive the mark of its
distinctiveness and hence impact.

Illinois High School Association v. GTE Vantage, 99 F.3d
244, 247, 40 USPQ2d 1633, 1635 (7th Cir. 1996) (dicta)
(parenthetical omitted).
“Dilution occurs when consumers associate a famous
mark that has traditionally identified the mark holder’s
goods with a new and different source.” Luigino’s, Inc.
v. Stouffer Corp., 170 F.3d 827, 832, 50 USPQ2d 1047,
1051 (8th Cir. 1999). Therefore, blurring occurs when a
substantial percentage of consumers, upon seeing the
junior party’s use of a mark on its goods, are
immediately reminded of the famous mark and associate the
junior party’s use with the owner of the famous mark,
even if they do not believe that the goods come from the
famous mark’s owner.
Prior to the FTDA, many courts analyzed state
dilution claims under the six “Sweet” factors, named
after the concurring opinion of Judge Sweet in Mead Data
Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 875
Opposition No. 114061
63
F.2d 1065, 1035, 10 USPQ2d 1961, 1969 (2d Cir. 1989)
(Sweet, J., concurring).19
The Sweet factors have not been widely accepted as a
test for dilution under the FTDA and we decline to apply
the test here. Ringling Bros., 170 F.3d at 464, 50
USPQ2d at 1077 (Sweet factor “analysis simply is not
appropriate for assessing a claim under the federal
Act”); I.P. Lund, 163 F.3d at 49, 49 USPQ2d at 1241
(Court agreed that the use of Judge Sweet’s six-factor
test is inappropriate); McCarthy,
24:94.2 (“[S]ince four of the six factors are of dubious
relevance to a case under the 1996 federal Act, use of
the six-factor test is bound to lead to erroneous
results”). Factors that we will look at in determining
whether dilution will occur include two of the Sweet
factors (similarity of the marks and renown of the senior
party, i.e., the person claiming fame) as well as whether
target customers are likely to associate two different
products with the mark even if they are not confused as
to the different origins of these products. Hasbro, 66
F. Supp.2d at 136, 52 USPQ2d at 1417.

19 The six Sweet factors are: (1) the similarity of the marks,
(2) the similarity of the goods; (3)the sophistication of
consumers; (4) predatory intent, (5) the renown of the senior
mark; and (6) renown of the junior mark. Id.
Opposition No. 114061
64
Starting first with the similarity of the marks, we
note that the marks are not identical. For dilution
purposes, a party must prove more than confusing
similarity; it must show that the marks are identical or
“very or substantially similar.” Nabisco, 191 F.3d at
218, 51 USPQ2d at 1889, quoting, Mead Data, 875 F.2d at
1029, 10 USPQ2d at 1964 (majority opinion). The test for
blurring is not the same as for determining whether two
marks are confusingly similar for likelihood of confusion
purposes. “To support an action for dilution by
blurring, ‘the marks must be similar enough that a
significant segment of the target group sees the two
marks as essentially the same.’” Luigino’s, Inc., 170
F.3d at 832, 50 USPQ2d at 1051) (quoting 2 McCarthy on
Trademarks and Unfair Competition, § 24:90.1 (4th ed.
1998). Therefore, differences between the marks are
often significant. Mead Data (LEXUS for cars did not
dilute LEXIS for database services).
While the marks TORO and “ToroMR” and design are
similar, we do not find that they are substantially
similar
for dilution purposes. Although the same word “toro”
appears in both marks, we do not see the marks as being
“essentially the same.” Applicant’s mark adds non-
Opposition No. 114061
65
trivial features, including the letters “MR’ and the
design of a
bull’s head, which somewhat change the look and sound of
the mark. Also, applicant’s mark may have a different,
alternative meaning because there is evidence that
applicant’s mark may be suggestive of shape when used on
thin film heads, which is different from the meaning or
suggestive connotation of opposer’s mark. Because
similarity for likelihood of confusion purposes is not
the test here and because we do not resolve doubts in
favor of a party claiming dilution, we conclude that this
factor does not favor opposer.
Second, we consider the renown of opposer’s mark.
As we discussed in the preceding section, opposer has not
established that its mark is famous and distinctive.
Again, based on the evidence of record, we cannot say
that opposer has shown that the public in general
associates the term “Toro” with opposer to the point that
it is now a mark with a singular identification even when
it is considered separate from the goods and services
with which it is associated.
Even if the mark were famous, there is still the
final key factor: whether target customers are likely to
associate two different products with the mark, even if
Opposition No. 114061
66
they are not confused as to the different origins of
these products. Hasbro, 66 F. Supp.2d at 136, 52 USPQ2d
at 1417. For example, the legislative history indicates
that the use of the mark BUICK for aspirin would be
actionable even though purchasers of aspirin would be
fairly confident that the automobile manufacturer did not
suddenly enter the pain reliever market. However, the
mark would be diluted because customers would wonder why
another party could use a mark that they thought would
have identified a unique, singular, or particular source.
To show that a mark is more than a simple trademark,
there must be some evidence that the potential purchasers
link the two marks in their minds even if it is simply to
speculate as to why the other party should be able to use
the famous mark of another. “Dilution theory presumes
some kind of mental association in the reasonable buyer’s
mind.” Mead Data, 875 F.2d at 1031, 10 USPQ2d at 1966,
quoting, 2 McCarthy § 24.13. We have no evidence on
which to conclude that potential buyers of applicant’s
goods would make any association between the parties’
marks when used on their respective goods and services.20

20 As both the legislative history and the case law make it
clear, dilution can occur between unrelated products regardless
of whether there is a likelihood of confusion. However, courts
have observed that “the closer the products are to one another
[in the marketplace], the greater the likelihood of both
Opposition No. 114061
67
Accordingly, opposer has not demonstrated that
registration of applicant’s mark will dilute its TORO
mark.
Conclusion
With respect to the ground of dilution, opposer has
not submitted sufficient evidence to support a finding
that its TORO marks are famous for purposes of the FTDA.
In addition, we find that even if the marks are famous,
there is insufficient evidence to support a finding that
applicant’s mark would dilute opposer’s marks. With
respect to the ground of likelihood of confusion, our
analysis under the traditional du Pont factors convinces
us that there is no likelihood of confusion between the
marks.
DECISION: The opposition to the registration of
applicant’s mark is dismissed.

confusion and dilution.” Las Vegas Sports News, 212 F.3d at
164, 54 USPQ2d at 1581, quoting, Nabisco Brands, 191 F.3d at
222, 51 USPQ2d at 1882.