A. The owner of a mark that is famous in this state shall be entitled, subject to the principles of equity, to an injunction against another's use of a mark, commencing after the owner's mark becomes famous, that causes dilution of the distinctive quality of the owner's mark and to obtain other relief as is provided in this section. In determining whether a mark is famous a court may consider factors such as, but not limited to:
(1) the degree of inherent or acquired distinctiveness of the mark in this state;
(2) the duration and extent of use of the mark in connection with the goods and services;
(3) the duration and extent of advertising and publicity of the mark in this state;
(4) the geographical extent of the trading area in which the mark is used;
(5) the channels of trade for the goods or services with which the owner's mark is used;
(6) the degree of recognition of the owner's mark in its trading area and in the other's trading area, and in the channels of trade in this state; and
(7) the nature and extent of use of the same or similar mark by third parties.
B. The owner shall be entitled only to injunctive relief in this state in an action brought under this section, unless the subsequent user willfully intended to trade on the owner's reputation or to cause dilution of the owner's mark. If willful intent is proven, the owner shall also be entitled to the remedies set forth in the Trademark Act, subject to the discretion of the court and the principles of equity.
History: Laws 1997, ch. 197, § 15.
ANNOTATIONSProving famousness. — With no evidence of the fame of the Thermafil mark in New Mexico, no argument why Thermafil would be considered famous under New Mexico law, and concessions that Thermafil is not famous outside the endodontic marketplace and that federal law requires such fame, the court dismissed the defendants' unfair competition claim based on trademark dilution. Guidance Endodontics v. Dentsply Int'l, Inc., 708 F.Supp.2d 1209 (D.N.M. 2010).
Section not limited to noncompeting products. — Despite the "notwithstanding" clause at the end of former 57-3-10 NMSA 1978 could not be limited to cases involving noncompeting products. Jordache Enters., Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482 (10th Cir. 1987).
Association of trademarks for parody purposes without corresponding association of manufacturers, which might confuse the consumer as to who is the actual manufacturer, does not tarnish or appropriate the good will of the manufacturer of the high quality similar product. Jordache Enters., Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482 (10th Cir. 1987).
Am. Jur. 2d, A.L.R. and C.J.S. references. — What constitutes "famous mark" for purposes of federal Trademark Dilution Act, 15 U.S.C. § 1125(c), which provides remedies for dilution of famous marks, 165 A.L.R. Fed. 625.