Trademark Dilution – Protecting Against Consumer Confusion
The basic purpose of trademark law is to protect consumers by enabling them to rely on recognizable marks to identify the source of goods and services. In order to prevail on a dilution claim under federal law, the owner of the mark must prove:
- Ownership of a famous mark that is widely recognized by the general consuming public; and
- After the mark became famous, the infringer began using a mark or trade name that is likely to cause dilution by “blurring” or “tarnishment” of the famous mark.
Dilution – Federal Dilution Statute
The Federal Trademark Dilution Revision Act (FTDRA) of 2006 provides owners of famous marks with protection against two types of dilution:
(1) Dilution by Blurring; and
(2) Dilution by Tarnishment.
A court may find dilution even if it would not find a likelihood of confusion and even if the owner and the alleged infringer sell dissimilar goods.
Dilution – Fame Factors
Under the FTDRA, a mark is famous if it is widely recognized by the general consuming public as a designation of the source of goods or services of the mark owner. In determining fame, the court may consider the following:
(1) The duration, extent and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties;
(2) The amount, volume and geographic extent of sales of goods or services offered under the mark;
(3) The extent of actual recognition of the mark. A market survey might be helpful.
(4) Whether the mark was registered on the Principal Register. Consider if distinctive.
Dilution by Blurring
Dilution by blurring is defined as “association arising from the similarity between the mark or trade name and a famous mark that impairs the distinctiveness of the mark.” The following factors are considered by the courts:
(1) The degree of similarity between the mark or trade name and the famous mark;
(2) The degree of inherent or acquired distinctiveness;
(3) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark;
(4) Degree of recognition of the famous mark;
(5) Whether the user of the alleged infringing mark or trade name intended to create an association with the famous mark; and
(6) Any actual association between the mark or trade name and the famous mark. Again, a survey may be helpful.
Dilution by Tarnishment
Dilution by tarnishment is an “association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.” Not all association will result in tarnishment. For example, the application of Maine’s anti-dilution statute to a magazine’s noncommercial parody of the L.L. Bean trademark was held to violate the First Amendment; where a magazine had not used the mark to identify or market goods or services.
Section 43(c)(5) of the Lanham Act specifies dilution remedies, stating:
In an action brought under this subsection, the owner of the famous mark shall be entitled to injunctive relief a set forth in section 1116 of this title. The owner of the famous mark shall also be entitled to (monetary relief) the remedies set forth in sections 1117(a) and 1118 of this title, subject to the discretion of the court and the principles of equity if:
(A) the mark or trade name that is likely to cause dilution by blurring or dilution by tarnishment was first used in commerce by the person against whom the injunction is sought after October 6, 2008.
(B) In a claim arising under this subsection:
(i) by reason of dilution by blurring, the person against whom the injunction is sought willfully intended to trade on the recognition of the famous mark; or
(ii) by reason of dilution by tarnishment, the person against whom the injunction is sought willfully intended to harm the reputation of the famous mark.
This section precludes monetary relief against anyone that began using a potentially diluting mark or trade name prior to October 6, 2008, unless an action was filed prior to that date.
Last Modified: December 5th, 2009