Trademark dilution is a legal theory that gives owners of famous trademarks the ability to prevent others from using those marks in ways that lessen their value and uniqueness. Along with trademark infringement, dilution is another way to enforce trademark rights. Unlike trademark infringement claims, dilution usually involves a defendant who uses another's mark on products different than the plaintiff's.
The Trademark Dilution Revision Act of 2006 ("TDRA") is the federal law covering dilution claims, and was enacted to protect both registered and unregistered famous trademarks, service marks, and trade dress from dilution. The law gives the owner of a famous mark the right to enjoin use of a mark or trade name "that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury." A plaintiff claiming dilution can even obtain relief before harm is done to the value of its famous mark.
A "famous mark" is defined under the TDRA as a mark "widely recognized by the general consuming public of the United States as a designation of source of the goods or services." Courts look to four main factors when determining whether a plaintiff's mark is famous:
In addition, famous marks under the TDRA must be distinctive, either inherently or through acquired distinctiveness (also known as "acquired secondary meaning").
"Dilution by blurring" results from an association arising from the similarity between a famous mark and the diluting mark that impairs the distinctiveness of the famous mark. Blurring has been characterized by courts as the gradual whittling away of a trademark's selling power and distinctiveness because of an unauthorized use by another on a different product.
There are six nonexclusive factors courts consider when determining if a mark is likely to cause dilution by blurring:
"Dilution by tarnishment" results from an association arising from the similarity between a famous mark and the diluting mark "that harms the reputation of the famous mark." Generally courts have found a likelihood of tarnishment when a mark was improperly associated with an inferior or offensive product or service.
Defendants who lose trademark dilution suits can be enjoined by the court from further diluting behavior. If the defendant is found to have "willfully intended to trade on the recognition of the famous mark," or "willfully intended to harm the reputation of the famous mark," and, in addition, the owner of the famous mark can receive as a remedy the defendant's profits, any damages suffered, and the costs of litigation.
The TDRA provides a number of defenses to dilution claims, including: