Trademark Dilution
No goods competition, no
likelihood of confusion
regarding similar goods;
what can you do?
Protect your reputation!
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Source of Law for
Trademark Dilution
Federal Trademark Dilution Act of 1995, defined in 15
U.S.C.A. § 1127 and codified in §1125(c)(protecting both
registered and unregistered trademarks against dilution)
Before the FTDA, only state law protected trade symbols
against dilution, either through common law or statutory law
Because of differences between federal and state protections
against dilution, the preemption doctrine does not have a
significant impact on state protection, thus allowing for a
dual scheme of protection against dilution
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Source of Law - continued
The International Trademark Association drafted a Model
State Trademark Bill, which most states have adopted
The ITA revised the Model in 1992, which was modeled on
the 1988 revisions to the Lanham Act, but the 1992 Model
has yet to be adopted by more than one state
If adopted by states, then the preemption doctrine may
play a more important role in dilution cases; but until then,
the pre-1992 Model State Trademark Bill is substantially
different from the revised Lanham Act
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Federal Law versus State Law
Federal Law State Law
protects only marks protects trade names
against dilution, not trade and other trademarks
names, which are not
used as trademarks provides only injunctive
relief
provides a damage
remedy in cases of willful no power to exclude
dilution imports of offending
goods
provides import exclusion
of offending goods protects strongly
distinctive marks, not
protects only famous just famous marks
marks 4
Purpose for Federal
Protection Against Dilution
Congressional intent to provide nationwide
uniformity in dilution principles
Availability of dilution protection, thus
discouraging forum shopping
Dilution protection consistent with GATT-TRIPs
and Paris Convention
Domestic dilution protection may encourage
international protection of famous domestic
trademarks 5
Dilution Defined, §1127
The lessening of the capacity of a
famous mark to identify and distinguish
goods and services, regardless of the
presence or absence of --
competition between the owner of the
famous mark and other parties, or
likelihood of confusion, mistake, or deception
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Justification for Judicial
Relief against Dilution
The statute does not expressly state when dilution occurs from
a ’s conduct; as well, it does not state the impact on ’s mark
Courts have explained these two concepts by stating that:
Dilution occurs when a ’s use of something similar to the ’s
mark impairs its selling power or reputation by:
blurring the distinctiveness or whittling away at the reputation of ’s mark,
tarnishing that reputation through association with something unsavory,
unwholesome, or of poor quality,
causing actual or potential confusion, or
unauthorized alteration of a competitor’s mark for the purpose of achieving
a negative emotional or subliminal effect in comparative advertising
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Types of Dilution
Tarnishment Blurring
active impairment of ’s described as leeching or erosion,
mark through negative blurring denotes a loss of
association distinctiveness, uniqueness, and
selling power such that a prior
the concern is with a loss of strong mark becomes weak
goodwill or reputation for a
specific level of quality the must show that ’s use of the
allegedly diluting mark is likely to
Three factors are the establish some sort of association in
degree of association the public mind b/w ’s mark and
between ’s mark and ’s the ’s goods
use (similarity), the
similarity of the target Three factors are strength of ’s
market, and ’s intent to mark, the similarity b/w ’s and ’s
achieve commercial gains or marks, and ’s intent to siphon the
advantages goodwill and reputation of ’s mark
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Multifactor Test for Famous
Trademarks §1125(c) and Dilution
Dilution
Famous Similarity and
(MF Test) Public Association Intent
•distinctiveness •similarity b/w marks required: •ride the coattails
• duration and extent of use more than a factor-- it’s a “must” •trade on goodwill
• duration and extent for a finding of trademark dilution- •unintentional
of ads and publicity thus, similarity focuses on the injunctive relief
• geographical trading area symbols alone •willful (all remedies)
• channels of trade •danger of an association arising in
• degree of recognition in the public mind b/w the and the
areas and channels or their respective products b/c
• third-party use of the similarity b/w symbols
• registration (only a factor)
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