In New York Stock Exchange v. New York, New York Hotel LLC, the Court of Appeals for the Second Circuit reaffirmed that a plaintiff seeking protection under the dilution provisions of the Lanham Act must establish that the mark at issue is inherently distinctive. In applying this standard, the Circuit Court reversed a lower court ruling that all of plaintiff's marks lacked the requisite inherent distinctiveness.

Plaintiff, The New York Stock Exchange, Inc. (the "Exchange"), commenced an action against the operator of a Las Vegas casino arising from the casino's use of several trademarks, including a logo depicting the architectural facade of New York Stock Exchange building. As part of its New York theme, the casino had placed a replica of the facade with the words "New York New York Stock Exchange" near its gambling floor and maintained a club called "New York $lot Exchange" for frequent gamblers.

The district court granted defendant's motion for summary judgment and dismissed plaintiff's infringement and dilution claims. With respect to the Lanham Act dilution claim, the district court held that the Exchange's NYSE marks were not entitled to protection because they were not inherently distinctive, notwithstanding their fame and acquired distinctiveness.

The Second Circuit affirmed the holding on the Lanham Act infringement claim, noting the extensive parody by the casino that could not reasonably be mistaken and which undercut any claim of infringement. With respect to the Lanham Act dilution claim, the Second Circuit held that the district court had properly determined that a mark must be inherently distinctive to be afforded protection under the dilution provisions of the Lanham Act. However, the lower court had erred in finding that all of the Exchange's marks lacked inherent distinctiveness. In particular, the Court found that the mark depicting the architectural facade of Exchange building was not descriptive of a stock market and that a juror could find that such mark was suggestive or arbitrary. Accordingly, the Court reversed the grant of summary judgment as to the facade logo, but affirmed the grant of summary judgment as to the Exchange's other marks.