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"'The damage has been done here,' says Forbis"

What Forbis is alleging, in general, is known as trademark dilution. Dilution, in short, is where the value and uniqueness of a trademark is lessened because of another party's use of a similar or identical mark. This is where things get complex, as "dilution" gets divided into "blurring" and "tarnishment." Tarnishment is something that harms the reputation of a trademark. Blurring, on the other hand, is by most accounts almost indistinguishable in analysis from the concept of a "likelihood of confusion" at common law and in many states.

There is a Federal Trademark Dilution Act (FTDA), which sets out a three part test for a Federal protection with regard to dilution. Under the FTDA, it must be proven that the initial mark is famous, that the second mark was adopted after the first one, and that the second mark blurs the strength and uniqueness of the first mark. I believe on a FTDA claim, the weemote would fail the first test. By the time the Wiimote was released, the weemote had not become famous and likely the term "weemote," when used in a survey of the public, would not be identified with any product.

In the Mead Data Central v. Toyota Motor Sales case, the court sets out a six part test for dilution by blurring that almost exactly mirrors many of the tests for confusion. The test is similar to what is used in many states (even though Mead is a federal case), and it has been applied for fact finding even in FTDA cases, like Ringling Bros. v. Utah Division of Travel Development. These factors are (quoting Mead):

1. similarity of the marks
2. similarity of the products covered by the marks
3. sophistication of consumers
4. predatory intent
5. renown of the senior mark
6. renown of the junior mark

These elements are considered as a whole in order to determine dilution by blurring. Looking to the facts in the "wee/wiimote" dispute, the case for blurring is not as strong as you might imagine. For the purpose of this analysis, just imagine that Nintendo did actually use the term "wiimote," and had a Wiimote logo that used the wii font. The first element, similarity, is limited more or less entirely to sound. The text is similar, but the stylized logos are quite different. Even granting similarity here, the remaining factors seem to fall flat. The products covered by the marks, while both being electronics that exist in the living room, look quite different and have very different functions and relative levels of technology. In fact, only the weemote DV, first available on Amazon December 2007, has the color white on it, while the Wiimote is available in white only. This simple color difference, in addition to different shapes, button layouts, design styles, and decades of technological differences, put these products in very different places. In fact, they would be on opposite ends of your local electronics store.

The sophistication of consumers is harder to judge on the weemote, and I'm sure the company would be able to speak better to this than I would. However, I imagine the market for the weemote is limited to parents of very young children who have some difficulty with the parental controls already built into their TVs, cable boxes, sattelite recievers, and TiVo units. Wii consumers, on the other hand, I would imagine are fairly sophisticated (yes, even grandma). They know exactly what they want and what it looks like. It is unlike a Wii purchaser would buy a weemote by mistake. Conversely, a weemote purchaser might pick up Wiimote by mistake, but even a short glance at the packaging would likely show them this is not the correct product.

"The internet has grown to the point where it can more or less create a term that becomes ubiquitous overnight"

The final three factors all have to do with the marks themselves. Predatory intent could speak to two different attitudes by the junior mark user, in this case Nintendo. First, it would be predatory to want to use the Wiimote to put the weemote out of business. I have seen no indication that this is the case. In the alternative, it may be predatory to try to use the weemote's populatiry to sell Wiimotes. Given that the company admits weak sales in the six years preceding the Wii's release, this also seems unlikely. The last two factors speak to the fame of each mark. Clearly, the weemote hasn't attracted much mainstream fame, while the Wiimote enjoys the fame and recognizability on top of the gaming world, and perhaps even comes close to the level that the iPod has reached.

There is an additional factor that can also be introduced: actual confusion. If there was evidence of consumers actually confusing the weemote and Wiimote, this would be evidence that could support dilution. The more frequent the confusion, the stronger the evidence.

Of course, all of this circumvents a threshhold issue: Nintendo doesn't call the Wii controller a Wiimote, nor does it have a trademark for "wiimote." In fact, it doesn't even seem that Nintendo came up with the term Wiimote. That alone seems to indicate a lack of predatory intent. But this is also, to some extent, the point Forbis is making. The internet has grown to the point where it can more or less create a term that becomes ubiquitous overnight, and that term may or may not be destroying the trademark of a business that's just trying to get started. Given that it is the responsibility of the trademark owner to police for possible infringement of its mark, many small businesses are faced with the nearly impossible task of policing the internet. And in the rare instance where the internet creates a term like "wiimote" that steamrolls an existing product, there isn't much the trademark owner can do.

Trademark laws, as they exist now, don't address issues such as this, and to my knowledge, the case law doesn't exist on a fact pattern like this. Really, there is a greater policy question as to if, or how, to even attempt to resolve these kind of issues. Should Forbis be entitled to protection because they came up with weemote first? Or should the fact that the brand didn't gain much, if any, traction in 6 years and the internet's adoption of the term "wiimote" be evidence to Forbis that it's time to re-evaluate its marketing strategy and brand? There is no easy answer to this question, and it's one that is likely to happen more frequently in today's internet-driven world.

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Mark Methenitis is the Editor in Chief of the Law of the Game blog, which discusses legal issues in video games. Mr. Methenitis is also a licensed attorney in the state of Texas with The Vernon Law Group, PLLC and a member of the Texas Bar Assoc., American Bar Assoc., and the International Game Developers Assoc. Opinions expressed in this column are his own. Reach him at: lawofthegame [AAT] gmail [DAWT] com.

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