## Facts

- Deere & Company owned long-standing federal registrations for its widely recognized “leaping deer” trademark used on agricultural and lawn-and-garden equipment and advertising.
- MTD Products, Inc., a competitor in the lawn-and-garden market, aired a comparative television commercial for lawn tractors.
- The commercial used a modified version of Deere’s logo: the proportions were changed, the “John Deere” name was removed, and the deer was animated.
- In the advertisement, the animated deer appeared fearful and ran away from an MTD lawn tractor, conveying that MTD’s product outperformed Deere’s and aiming for humor.
- Deere sued alleging, among other claims, dilution under New York General Business Law § 368-d and sought injunctive relief.
- The district court denied a temporary restraining order but granted a preliminary injunction barring broadcast of the commercial within New York.
- MTD appealed the preliminary injunction; Deere cross-appealed seeking broader geographic relief.

## Issues

1. Whether a competitor’s altered and animated depiction of a famous trademark in a comparative television advertisement is likely to cause dilution under N.Y. Gen. Bus. Law § 368-d.
2. Whether the preliminary injunction properly could extend beyond New York given multi-state dissemination and the nature of dilution injury.

## Decision

- The Second Circuit affirmed the grant of a preliminary injunction based on Deere’s likelihood of success on its New York dilution claim.
- The court held the commercial’s use of an altered, animated version of the Deere logo for humorous effect was likely to dilute the mark’s distinctive quality.
- The court accepted that dilution injury to a famous mark is difficult to quantify and may be treated as irreparable for preliminary-injunction purposes.
- On scope, the court concluded that relief need not be confined to New York when the challenged advertisement is broadcast beyond the state and broader relief is needed to prevent continued dilution.

## Legal Principles

- New York’s dilution statute protects the “distinctive quality” of a famous mark and does not require proof of likelihood of confusion, competition, or actual economic loss.
- Dilution may occur through:
  - blurring, which weakens a mark’s singular association with its source; and
  - tarnishment, which harms a mark’s reputation by association or disparaging portrayal.
- Comparative advertising may use a competitor’s mark to identify the competitor, but that limited permission does not extend to materially altering or caricaturing a famous mark in a way likely to diminish its distinctiveness or reputation.
- In assessing likely dilution at the preliminary-injunction stage, courts consider whether the challenged depiction makes the trademark itself the target of ridicule or otherwise reduces its source-identifying power.
- A court applying New York dilution law may order injunctive relief with effect beyond New York when necessary to prevent ongoing dilution from broadly disseminated advertising.

## Conclusion

The Second Circuit held that a competitor’s humorous, altered animation of a famous logo in comparative advertising was likely to dilute the mark under New York law and affirmed preliminary injunctive relief, recognizing that dilution injury is irreparable and may warrant geographically broader restraint where the advertisement is widely broadcast.


Deere & Co. v. MTD Prods., Inc., 41 F.3d 39 (2d Cir. 1994)