Trademark Dilution

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.

Definition of a "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:

• The duration, extent, and geographic reach of advertising and publicity of the mark;
• The amount, volume, and geographic extent of sales under the mark;
• The extent of actual recognition of the mark; and
• Whether the mark is registered.

In addition, famous marks under the TDRA must be distinctive, either inherently or through acquired distinctiveness (also known as "acquired secondary meaning").

Trademark Dilution by Blurring

"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:

• The degree of similarity between the diluting mark and the famous mark;
• The degree of distinctiveness of the famous mark;
• The extent to which the owner of the famous mark is engaged in "substantially exclusive use of the mark";
• The degree of recognition of the famous mark;
• Whether the user of the diluting mark intended to create an association between it and the famous mark; and
• Any actual association between the diluting mark and the famous mark.

Trademark Dilution by Tarnishment

"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.

Remedies for Trademark Dilution

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.

Defenses to Dilution Claims

The TDRA provides a number of defenses to dilution claims, including:

• Fair use (comparison advertising, parody, or criticism), which allows uses of a mark as long as they are in good faith and only to describe the goods or services of a party or the geographic origin of the goods or services;
• News reporting and news commentary;
• Any noncommercial use of a mark.