Chief Judge Sue Robinson ruled in favor of Sanofi-Aventis in this trademark suit and granted a permanent injunction against defendant’s use of the “Advancis” mark. Sanofi-Aventis owned federal registrations for both “Aventis” and “Sanofi-Aventis” (the “Sanofi-Aventis” combination mark was registered after the merger of Aventis and Sanofi-Synthelabo). Sanofi brought claims of trademark infringement, false designation of origin, federal and state trademark dilution, unfair competition, and deceptive trade practices against Advancis. The court, after a lengthy likelihood of confusion analysis, concluded that the relevant consumers were likely to confuse the “Aventis” and “Advancis” marks. The court found in favor of Sanofi on all their claims, except their Federal Trademark Dilution Act (FTDA) claim.
This decision is notable for two reasons: 1) the holding that the combination of marks after a merger does not abandon a mark brought to the merger, nor does it dispose of the goodwill associated with the mark that was brought to the merger (pg. 12) and 2) the court’s decision on Sanofi’s federal dilution claim would be different under legislation pending the White House’s approval (see post below on H.R. 683). As to this second interesting point, we reported on September 29th that amendments to the Federal Trademark Dilution Act had been passed by Congress and were awaiting the President’s signature. On October 6, 2006, the President signed this legislation into law. In this case, the court found Sanofi had shown a likelihood of dilution sufficient to satisfy the state dilution claim, but had not shown actual dilution sufficient to satisfy the FTDA under Victoria’s Secret. Thus, the change from an actual dilution standard (current law) to a likelihood of dilution standard (H.R. 683) would have enabled Sanofi to prevail on their FTDA claim.
I wonder if prevailing on the FTDA claim would have made any practical difference in this case. I would be interested in anyone’s thoughts on this question.