“Virginia is for Lovers.” Most people associate this phrase with the well-known advertising campaign to attract tourists to visit the state of Virginia. In May, the Virginia Tourism Corp., the state’s tourism agency, sued Recovered Gold LLC in federal court for trademark dilution and infringement for using the phrase “Virginia is for Gun Lovers” on retail merchandise, according to the Richmond Times-Dispatch.
The article reports that the state’s slogan has been in use for almost 50 years, so the state certainly has an interest in protecting its strength in the tourism marketplace. However, the dispute illustrates the fine legal line that exists between diluting a trademark by tarnishment and the acceptable use of parody.
What is trademark dilution?
The International Trademark Association defines trademark dilution as “acts that weaken the uniqueness of [a] famous mark,” usually through tarnishment or blurring. Instead of asking the question in usual trademark infringement cases of whether there is a likelihood of confusion, in dilution, a famous mark is protected from use by anyone likely to weaken the mark’s strength or distinctiveness through use of the same or a similar mark in association with goods or services different than those originally associated with the mark in question.
To be eligible for protection from dilution, the mark must be famous, meaning it has “achieved extensive recognition … [like] Coca-Cola …” It will be interesting to see if the court finds that “Virginia is for Lovers” is a famous mark eligible for protection from dilution.
Blurring refers to the use of a protected mark in connection with different goods or services like applying Ikea to a vehicle. Tarnishment deals with reputational harm by the use of a famous mark in connection with something that is “inappropriate or unflattering,” notes the ITA, like something offensive or critical of the original use.
Parody and blurring
Blurring allegations can also raise a constitutional issue. For example, use of a mark in a way that criticizes the original owner or product in some provocative way or that raises an issue of political or societal relevance may be protected by the right to free speech or expression, making the use a fair one that would not be illegal.
Parody-blurring cases are extremely fact-specific.