Abstract

     In Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car, Inc., the United States Court of Appeals for the Federal Circuit rendered its first construction of the Federal Trademark Dilution Act of 1995. On appeal from the Trademark Trial and Appeal Board, the Federal Circuit faced the issue of whether an opposition proceeding based on dilution can be maintained when the applicant for a mark had been used only in a limited geographic area before the opposing party’s mark became famous. The court also considered whether a state dilution statute could serve as the basis for a federal opposition proceeding.
     The Federal Circuit rejected the opposer Enterprise’s arguments on both points. As long as the applicant’s use was “in commerce” within the meaning of the Lanham Act, “the owner of a famous mark cannot oppose registration based on dilution where its mark did not achieve fame prior to the applicant’s use in a limited geographic area.” The Federal Circuit found no evidence that Congress intended to add state dilution statutes to the grounds for opposition to a federal trademark application. Because the Federal Circuit’s statutory interpretation applies equally to District Court proceedings, it presents yet another hurdle for trademark  holders seeking relief under the Federal Trademark Dilution Act.