Laws & Litigation

The five daughters of Marion Rumsey Cartier were angry when their mother donated 50 pieces of jewelry valued at $2.3 million to St. Louis University just before she died in 1994.

But they had little to say in the matter at the time. Cartier, whose father, Pierre, established the House of Cartier's New York offices, donated the jewelry as a memorial to her mother, Elma, who was born in St. Louis. Though Marion Cartier visited St. Louis only once, university officials cultivated a friendship with her and visited her at her home in Switzerland.

After her death, her daughters - Violaine, Dominique, Elma, Marie and Michele - hired an attorney in an attempt to retrieve the jewels, says the New York Daily News. The case was settled out of court late last year. Details were not released, but the newspaper quotes a high-level source who says the daughters got some of the jewelry back in exchange for cash.

John Kerr, the university's associate vice president for public relations, says the university will have no comment.

President Clinton signed into effect on Jan. 16 a new law designed to protect the distinctiveness and value of well-known trademarks.

The Federal Trademark Dilution Act of 1995, sponsored by Sen. Orrin Hatch (R-Utah), protects trademarks from subsequent uses that blur the unique value attached to a well-known brand name. It provides additional legal remedies to firms whose trademarks are used by others for commercial purposes.

Under the new law, jewelers no longer need prove that another firm created "confusion" in the marketplace by using the jeweler's well known trademark or name, says Roberta Jacobs-Meadway, a patent and trademark attorney from Panitch Schwarze Jacobs & Nadel, Philadelphia.

Simple use of the famous name or design in a commercial venture is cause enough to seek an injunction to halt that use across the country. Such use would cause "dilution" of the name's distinctiveness. The firms involved need not be competitors or even in the same business for dilution to occur. She cites a recent example from a state dilution case in which the owners of the U.S. division of Godiva chocolates successfully sued a dog food firm for using the name "dogiva" on its dog food.

The law extends to anything that is trademarked, she notes, including names, designs, "looks" and colors. Say a jewelry designer known for a certain "look" discovers that a garment maker is selling T-shirts or sneakers incorporating that "look." The designer can claim these uses dilute the value of the initial design and basis for the designer's continued fame.

If a firm is proven to have "willfully intended" to use another's tradename or design specifically to profit from that name's fame or reputation, the name's owner also can sue for damages.

Jacobs-Meadway says the law's national reach may spur its use, particularly for nationally known consumer goods. Many courts previously were reluctant to grant nationwide injunctions for violations of state dilution laws because only 25 states have such laws. The federal law now supersedes these state laws.

Jacobs-Meadway says the new law also may give the U.S. Patent and Trademark Office another reason to reject new trademark applications. (See "Karat marks & trademarks" in "Grow with Gold," March 1996 JCK Part II, page 58.) While it's too soon to tell how frequently dilution will be cited in any trademark rejections, the new law is likely to cause some delays during trademark searches.

Famous enough: The law lists a number of criteria for determining whether a mark has acquired the level of distinctiveness needed to be considered famous and therefore protected by law. These criteria include:

1) the degree of inherent or acquired distinctiveness of the mark;

2) the duration and extent of the use of the mark;

3) the geographic extent of the trading area in which the mark is used;

4) the channels of trade for the goods or services with which the mark is used, and

5) the nature and extent of use of the same or similar marks by third parties.

Hatch's office explained that recently enacted GATT trade agreements include a provision designed to provide dilution protection to famous marks. "This new law is consistent with the terms of the agreement as well as the Paris Convention of which the U.S. is also a member," said Hatch. "Enactment of this federal dilution statute assists the executive branch in its bilateral and multilateral negotiations with other countries to secure greater protection for the famous marks owned by U.S. companies." Hatch added that other countries were reluctant to change their laws to protect U.S. marks until the U.S. itself did so.