Pornhub Sends a Cease-and-Desist Letter to a Restaurant

The parent company of Pornhub is demanding that a restaurant in the East Village of New York City change its logo.

Mindgeek, the parent company, sent a cease-and-desist letter to the restaurant last month. The letter stated that this could cause confusion among Pornhub customers regarding the restaurant’s offerings, as the restaurant’s name has “the same look and feel” as that which Pornhub uses.

While most media stories discuss that Pornhub and Doner Haus are radically different services (pornography and restaurants), most media stories do forget about trademark dilution (though it is unknown if the letter to Doner Haus claimed that). 

Trademark dilution is a legal concept in intellectual property law that refers to the lessening or weakening of the distinctive quality or reputation of a famous trademark due to the use of a similar or identical mark by another party on unrelated goods or services. The key elements of trademark dilution typically include:

1. Famous Trademark: To establish a claim of dilution, the trademark in question must be widely recognized and famous. This means it has achieved a high level of recognition and distinctiveness in the minds of the public.

2. Similarity: There must be a similarity or connection between the famous trademark and the allegedly diluting mark. This similarity could be in terms of the visual, phonetic, or conceptual aspects of the marks.

3. Unrelated Goods or Services: The famous trademark and the alleged diluting mark must be used on unrelated goods or services. In other words, the dilution occurs when the infringing mark is used in a way that doesn’t directly compete with or imitate the famous mark’s products or services.

Trademark dilution laws aim to protect the unique identity and strength of famous trademarks, even when there is no likelihood of consumer confusion between the two marks. Dilution can occur in two primary forms:

1. Blurring: This occurs when the distinctiveness of a famous trademark is weakened because a similar or identical mark is used on unrelated products or services. Over time, consumers may start to associate the famous mark with a wider range of goods or services, eroding its exclusivity.

2. Tarnishment: Tarnishment happens when a famous trademark is used in connection with inferior or negative products or services. This can harm the reputation and image of the famous mark.

Trademark dilution is governed by laws in many countries, including the United States, where the Federal Trademark Dilution Act (FTDA) and the Trademark Dilution Revision Act (TDRA) provide protection against trademark dilution.  In this case, Pornhub would probably want to assert Trademark Dilution by Blurring because the goods and services are unrelated, but its trademark is famous, and consumers may associate its famous mark with the restaurant.

The Federal Trademark Dilution Act (FTDA), which was later amended and replaced by the Trademark Dilution Revision Act (TDRA) in the United States, provides for specific remedies in cases of trademark dilution. The TDRA, enacted in 2006, expanded and clarified the protections against trademark dilution. Under the TDRA, the following damages and remedies are available in cases of trademark dilution:

1. Injunctive Relief: One of the primary remedies in a dilution case is injunctive relief. This means that the court can issue an injunction to prevent the defendant from using the allegedly diluting mark in a way that dilutes the famous trademark’s distinctiveness.

2. Actual Damages: If the plaintiff can demonstrate that they have suffered actual monetary damages as a result of the dilution, they may be entitled to recover those damages. Actual damages can include lost sales, harm to the reputation of the famous mark, and other financial losses directly attributable to the dilution.

3. Profits: In cases where the defendant’s use of the diluting mark has resulted in the defendant’s profits, the plaintiff may be entitled to recover a portion of those profits as damages. This is known as a disgorgement of profits. The plaintiff must prove that the defendant’s use of the mark caused these profits.

4. Statutory Damages: The TDRA also allows for statutory damages, which provide a predetermined amount of damages without requiring proof of actual harm or profits. The maximum amount of statutory damages varies depending on the circumstances but can range from $1,000 to $200,000 per mark per type of goods or services in question.

5. Attorney’s Fees: In some cases, the prevailing party may be entitled to recover their attorney’s fees and costs. This is at the discretion of the court and is intended to help offset the legal expenses incurred during litigation.

It’s important to note that the availability of these remedies and the specific damages awarded can vary depending on the facts of the case and the court’s judgment. Additionally, the TDRA places certain limitations on the availability of remedies, such as requiring a showing of actual dilution rather than mere likelihood of dilution for certain types of dilution claims.