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AVERY DENNISON CORPORATION v. JERRY SUMPTON, et al.

United States Court of Appeals for the Ninth Circuit
189 F.3d 868 (1999)
ELI5:

Rule of Law:

For a trademark to be protected under the Federal Trademark Dilution Act, it must be truly famous, possessing a degree of distinctiveness beyond that required for mere trademark protection. Furthermore, the defendant's 'commercial use' must involve capitalizing on the mark's value as a trademark, not merely using a word that happens to be a trademark for its non-trademark value, such as a common surname.


Facts:

  • Avery Dennison Corporation sells office products and industrial fasteners using the registered trademarks 'Avery' and 'Dennison.'
  • The 'Avery' mark has been in use since the 1930s and registered since 1963; the 'Dennison' mark has been in use since the late 1800s and registered since 1908.
  • Avery Dennison spends over $5 million annually advertising products under these marks and has billions in annual sales across all its brands.
  • Jerry Sumpton, through his company Freeview Listings Ltd. (d/b/a 'Mailbank'), offers 'vanity' email addresses to the public for a fee.
  • For this purpose, Mailbank registered thousands of domain names, most of which were common surnames, including and .
  • Mailbank's business model was to license email addresses, such as 'jerry@avery.net,' capitalizing on the words' value as surnames, not as brands.
  • Mailbank's domain name archives also included categories titled 'Rude' (containing lewd terms) and 'Business' (containing some common trademarks).

Procedural Posture:

  • Avery Dennison Corporation sued Jerry Sumpton and Freeview Listings Ltd. in the U.S. District Court for the Central District of California for trademark dilution.
  • The district court granted summary judgment for Avery Dennison.
  • The district court ruled as a matter of law that the 'Avery' and 'Dennison' marks were famous and that Sumpton's registration of the domain names constituted dilution.
  • The district court entered a permanent injunction ordering Sumpton (Appellants) to transfer the domain names to Avery Dennison (Appellee).
  • Sumpton appealed the summary judgment and injunction to the United States Court of Appeals for the Ninth Circuit.

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Issue:

Does registering domain names that correspond to common surnames, which are also trademarks, for the purpose of licensing 'vanity' email addresses constitute commercial use that dilutes the trademarks under the Federal Trademark Dilution Act?


Opinions:

Majority - Judge Trott

No. Registering domain names corresponding to common surnames for the purpose of licensing vanity email addresses does not constitute dilution under the Federal Trademark Dilution Act because the marks were not proven to be truly famous and the use was not commercial in a trademark sense. The court found that Avery Dennison failed to establish two essential elements of its dilution claim. First, it failed to show its marks were 'famous' as required by the statute, which demands a higher level of renown than mere distinctiveness or secondary meaning. The widespread use of 'Avery' and 'Dennison' as surnames and by third-party businesses undermines the claim of true fame. Second, the court held that Sumpton's business did not constitute 'commercial use' in a trademark sense. Sumpton was not using the marks to sell competing goods or trading on Avery Dennison's goodwill; rather, he was using the words for their non-trademark value as surnames. Because Avery Dennison failed on these two threshold elements, summary judgment in its favor was improper.



Analysis:

This decision significantly narrowed the application of the Federal Trademark Dilution Act in the context of domain name disputes, particularly for marks that are also common words or surnames. The court established a high bar for the 'famousness' element, clarifying that it requires more than the 'acquired distinctiveness' needed for basic trademark protection. It also critically defined 'commercial use' as use of a mark qua trademark, thereby protecting individuals who use words for their primary linguistic or descriptive meaning rather than to exploit brand value. This case served as an important check on the power of trademark holders to claim rights 'in gross' over common words on the internet, distinguishing legitimate business models from cybersquatting.

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