11th Cir. Pattern Jury Instr. (Civil) 10.5

[Name of plaintiff] claims that [name of defendant]’s use is likely to dilute

the distinctiveness of [name of plaintiff]’s trademark. To prove [his/her/its] claim

of likely dilution, [name of plaintiff] must prove the following facts by a

preponderance of the evidence:

1. [Name of plaintiff]’s trademark is famous and distinctive, either

inherently or through acquired distinctiveness;

2. [Name of defendant]’s use of [his/her/its] trademark began after

[name of plaintiff]’s trademark became famous; and

3. [Name of defendant] use of [his/her/its] trademark is likely to cause

[dilution by blurring/dilution by tarnishment] of [name of

plaintiff]’s famous trademark.

To prevail on a claim for likely dilution of [his/her/its] trademark, [name of

plaintiff] must prove by a preponderance of the evidence that [his/her/its]

trademark was “famous” at the time of [name of defendant]’s first use of [name of

defendant]’s trademark. A claimed trademark is “famous” if it is widely

recognized by the general consuming public of the United States as the designation

of the source of the owner’s goods. In considering whether [name of plaintiff]’s

trademark is “famous,” you may consider all relevant factors, including the

following:

1. The duration, extent, and geographic reach of advertising and

publicity of the trademark, whether advertised or publicized by

[name of plaintiff] or third parties;

2. The amount, volume, and geographic extent of sales of goods

offered under [name of plaintiff]’s trademark;

3. The extent of actual recognition of [name of plaintiff]’s trademark;

and

4. Whether [name of plaintiff]’s trademark was registered on the

Principal Register of the United States Patent and Trademark

Office.

[The following instruction should be given when plaintiff is claiming that

defendant’s use is likely to cause dilution by blurring:

[Name of plaintiff] claims that [name of defendant]’s use of [his/her/its]

trademark is likely to blur [name of plaintiff]’s trademark. Likelihood of dilution

by blurring occurs when the similarity between [name of defendant]’s trademark

and [name of plaintiff]’s famous trademark impairs the distinctiveness of the

famous trademark. In determining whether [name of defendant]’s trademark is

likely to blur the distinctiveness of [name of plaintiff]’s trademark you may

consider all relevant factors, including the following:

1. The degree of similarity between the [name of defendant]’s

trademark and [name of plaintiff]’s trademark;

2. The degree of inherent or acquired distinctiveness of [name of

plaintiff]’s trademark;

3. The extent to which [name of plaintiff] is engaging in substantially

exclusive use of [his/her/its] trademark;

4. The degree of recognition of [name of plaintiff]’s trademark;

5. Whether [name of defendant] intended to create an association with

[name of plaintiff]’s trademark; and

6. Any actual association between [name of defendant]’s trademark

and [name of plaintiff]’s trademark.

[Name of plaintiff] is not required to prove actual or likely confusion or

actual economic injury to prove that blurring is likely.]

[The following instruction should be given when [name of plaintiff] is claiming

that [name of defendant]’s use is likely to cause dilution by tarnishment:

[Name of plaintiff] claims that [name of defendant]’s use of [his/her/its]

trademark is likely to tarnish [name of plaintiff]’s trademark. Dilution by

tarnishment occurs when a claimed trademark harms the reputation of a famous

trademark.

[Name of plaintiff] is not required to prove actual or likely confusion or

actual economic injury to prove that tarnishment is likely. [Name of plaintiff] only

needs to prove likely dilution by tarnishment to recover on [his/her/its] dilution

claim.]

Affirmative Defenses

There are defenses to a claim of likely dilution [by blurring/by tarnishment].

If [name of defendant] proves by a preponderance of the evidence that the use of

[his/her/its] trademark was [a fair use/in news reporting or commentary/non-commercial use], then [name of defendant] has not engaged in trademark dilution.

“Fair use” includes a nominative or descriptive fair use, or facilitation of

such fair use, of [name of plaintiff]’s trademark by [name of defendant] other than

as a designation of source for [name of defendant]’s own goods. Such fair use

includes use of [name of defendant]’s trademark in connection with:

1. Advertising or promotions that permit consumers to compare [name

of plaintiff] and [name of defendant]’s goods; or

2. [Name of defendant]’s identifying and parodying, criticizing, or

commenting upon [name of plaintiff] or the goods of [name of

plaintiff]; or

3. All forms of news reporting and news commentary; or

4. Any non-commercial use of a trademark.

Remedies

If you find that [name of defendant]’s use is likely to dilute [name of

plaintiff]’s trademark, and [name of defendant] does not have a defense to the

likely dilution, you must consider whether, and to what extent, monetary relief

should be awarded. You may award [name of plaintiff] monetary relief if:

1. [Name of defendant]’s mark was first used after October 6, 2006;

and

2. [Name of defendant]’s conduct was willful.

Plaintiff’s Actual Monetary Damages

You may award actual damages that [name of plaintiff] has sustained as a

result of [name of defendant]’s willful violation of [name of plaintiff]’s trademark

rights. [Name of plaintiff] may recover the economic injury to [his/her/its] business

proximately resulting from [name of defendant]’s wrongful acts. You are not

required to calculate actual damages with absolute exactness – you may make

reasonable approximations. But any award of actual damages to [name of plaintiff]

must be just and reasonable, based on facts, and proved by [name of plaintiff] by a

preponderance of the evidence.

Defendant’s Profits and Calculation of Profits

Alternatively, you may make an award based on an accounting of [name of

defendant]’s profits as a result of [name of defendant]’s willful violation of [name

of plaintiff]’s trademark rights.

A defendant commits a “willful violation” of a trademark when that

defendant knowingly and purposefully capitalized on and appropriated for itself

the goodwill of a plaintiff.

In determining [name of defendant]’s profits, [name of plaintiff] is only

required to prove [name of defendant]’s gross sales. [Name of defendant] may then

prove the amount of sales made for reasons other than the likely dilution. [Name of

defendant] also may prove its costs or other deductions which [he/she/it] claims

should be subtracted from the amount of [his/her/its] sales to determine [his/her/its]

profits on such sales. Any costs or deductions that [name of defendant] proves, by

a preponderance of the evidence, are required to be subtracted from the sales

attributable to the likely dilution and the difference is the amount that may be

awarded to [name of plaintiff].

Dilution

SPECIAL INTERROGATORIES TO THE JURY

Do you find by a preponderance of the evidence that:

1. [Name of plaintiff]’s trademark has become famous?

Answer Yes or No _____________

If your answer is “Yes,” go to Question No. 2. If your answer is “No,”

then your foreperson should sign and date the last page of this verdict form.

2. [Name of defendant]’s use of [his/her/its] trademark began after

[name of plaintiff]’s trademark became famous?

Answer Yes or No _____________

If your answer is “Yes,” go to Question No. 3. If your answer is “No,”

your foreperson should sign and date the last page of this verdict form.

3. [Name of defendant]’s trademark is likely to cause dilution by

blurring the distinctiveness of [name of plaintiff]’s trademark?

Answer Yes or No _____________

If your answer is “Yes,” go to Question No. 4. If your answer is “No,”

then your foreperson should sign and date the last page of this verdict form.

4. [Name of defendant]’s trademark is likely to cause dilution by

tarnishing [name of plaintiff]’s trademark?

Answer Yes or No _____________

If your answer is “Yes,” go to Question No. 5. If your answer is “No,”

your foreperson should sign and date the last page of this verdict form.

5. [Name of defendant]’s use of [his/her/its] trademark is a “fair use”

of [name of plaintiff]’s trademark?

Answer Yes or No _____________

If your answer is “No,” go to Question No. 6. If your answer is “Yes,”

then your foreperson should sign and date the last page of this verdict form.

6. [Name of defendant]’s trademark is used for news reporting or

news commentary?

Answer Yes or No _____________

If your answer is “ No,” then go to Question No. 7. If your answer is

“Yes,” then your foreperson should sign and date the last page of this verdict

form.

7. [Name of defendant]’s trademark is used for non- commercial

purposes?

Answer Yes or No _____________

If your answer is “Yes,” then your foreperson should sign and date the

last page of this verdict form. If your answer is “No,” then go to Question

No. 8.

8. [Name of defendant]’s trademark was first used after October 6,

2006?

Answer Yes or No _____________

If your answer is “Yes,” go to Question No. 9. If your answer is “No,”

then your foreperson should sign and date the last page of this verdict form.

[The following special interrogatory should be used in cases in which

plaintiff claims likely dilution by blurring:

9. [Name of defendant] willfully intended to trade on the recognition

of [name of plaintiff]’s famous trademark?

Answer Yes or No _____________

If your answer is “Yes,” go to Question No. 10. If your answer is

“No,” then your foreperson should sign and date the last page of this verdict

form.]

[The following special interrogatory should be used in cases in which

plaintiff claims likely dilution by tarnishment:

10. [Name of defendant] willfully intended to harm the reputation of

[name of plaintiff]’s famous mark?

Answer Yes or No _____________

If your answer is “Yes,” go to Question No. 11. If your answer is

“No,” then your foreperson should sign and date the last page of this verdict

form.]

[The following special interrogatories should be used if plaintiff seeks

actual damages for dilution:

11. [Name of plaintiff] suffered actual damages as a result of [name of

defendant]’s dilution of [name of plaintiff]’s trademark?

Answer Yes or No _____________

If your answer is “Yes,” go to Question No. 12. If your answer is

“No,” go to Question No. 13.]

12. [Name of plaintiff] is awarded actual damages?

If your answer is “Yes,” in what amount?

$_______________________]

[The following special interrogatories should be used if plaintiff seeks an

Accounting of defendant’s profits for likely dilution:

13. [Name of defendant]’s conduct was willful?

Answer Yes or No _____________

If your answer to this question is “Yes,” go to Question No. 14 below.

If your answer is “No,” then your foreperson should sign and date the last

page of this verdict form.

14. [Name of plaintiff] is awarded [name of defendant]’s profits?

If your answer is “Yes,” in what amount?

$_______________________]

SO SAY WE ALL.

___________________________

Foreperson’s Signature

DATE: ___________________