TRADEMARK DILUTION

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TRADEMARK DILUTION

• Jennifer Rabin
• Steven Greenberg

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Trademark Law Basics
What is a trademark? A trademark (or service
mark) is a word, symbol, phrase or other indicia
which when used in commerce denotes the source of
a good or service to which the mark has been
affixed, either practically or literally. Key
Terms Used, Commerce, Source
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Trademark Law Basics
What rights do trademarks provide to their
holders when applied to a specific good or
service? The right to enjoin others from using
an identical or similar mark in commerce in
connection with another good or service which
creates a likelihood of confusion between the
goods or services.
The touchstone of trademark infringement is the
likelihood of confusion!
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Trademark Law Basics

• The strength of a mark can range from
• Unprotectable (Generic Usage)
• Marginally Protectable (Descriptive Usage)
• Reasonably Protectable (Suggestive Usage)
• Strongly Protectable (Arbitrary or Fanciful Usage)

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Trademark Law Basics
If trademark infringement requires a likelihood
of confusion, how can I defend my mark where a
competing usage is likely not to create confusion
in the mind of the consuming public?
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Trademark Dilution
The Federal Trademark Dilution Act of 1995
provides a cause of action to owners of famous
marks against the dilution of the distinctive
quality of their marks.
15 U.S.C.
1125(c)(1)
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Trademark Dilution
Federal dilution involves the lessening of the
capacity of a famous mark to identify and
distinguish goods or services, regardless of the
presence or absence of (1) competition between
the owner of the famous mark and other parties
or, (2) likelihood of confusion, mistake, or
deception
15 U.S.C. 1127
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Trademark Dilution
Unlike traditional infringement law, the
prohibitions against trademark dilution are not
the product of common-law development, and are
not motivated by an interest in protecting
consumers. The seminal discussion of dilution is
found in Frank Schechters 1927 law review
article concluding that the preservation of the
uniqueness of a trademark should constitute the
only rational basis for its protection. Rational
Basis of Trademark Protection, 40 Harv. L. Rev.
813, 831.
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Trademark Dilution
The FTDA provides that only famous and
distinctive marks are subject to protection
however, no definition of famous or
distinctive is included within the Act nor, is
there an indication of whether the
distinctiveness referred to means inherent
distinctiveness or acquired distinctiveness.
This has led to a split of authority in the
Federal court system.
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Trademark Dilution
(c)(1) The owner of a famous mark shall be
entitled . . . to an injunction against another's
commercial use in commerce of a mark or trade
name, if such use begins after the mark has
become famous and causes dilution of the
distinctive quality of the famous mark . . . In
determining whether a mark is distinctive and
famous . . . a court may consider 15 U.S.C.
1125(c)(1)
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Trademark Dilution
The statutory language of the FTDA provides a
non-exhaustive eight factor test for determining
distinctiveness and famousness (a) the degree
of inherent or acquired distinctiveness of the
mark (b) the duration and extent of use of the
mark in connection with the goods or services
with which the mark is used (c) the duration and
extent of advertising and publicity of the mark
(d) the geographical extent of the trading area
in which the mark is used

MORE...
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Trademark Dilution
(e) the channels of trade for the goods or
services with which the mark is used (f) the
degree of recognition of the mark in the trading
areas and channels of trade of the mark's owner
and the person against whom the injunction is
sought (g) the nature and extent of use of the
same or similar marks by third parties and, (h)
whether the mark has been registered in the
United States Patent and Trademark Office.

15 U.S.C. 1125(c)(1)
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Trademark Dilution
The statute itself is ambiguous in that in the
first sentence it refers to the owner of a
famous mark being entitled to certain remedies,
while in the second sentence it states that the
court is to evaluate certain factors in
determining whether a mark is both distinctive
and famous. This inconsistency is the cause of
extreme disparity in determining whether a
trademark owner can make out a claim under the
FDTA.
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Trademark Dilution
One recognized trademark commentator has argued
that the term distinctiveness appearing in the
second sentence is merely synonymous with fame
and should not be read as a separate independent
requirement for protection under the FDTA. J.
Thomas McCarthy, McCarthy on Trademarks 24.91
(4th ed. 2002)
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Trademark Dilution
Others have posited that the rights granted by
the FTDA so greatly expand the rights of the
trademark owner that the FTDA should be read to
apply only to a narrow class of supermarks that
meet the higher standard of both distinctiveness
and fame.
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Trademark Dilution
2nd Circuit (1) Nabisco, Inc. v. PF Brands,
Inc., 191 F.3d 208, 216 (2d Cir. 1999) (2) TCPIP
Holding Co. v. Haar Communications, Inc., 244
F.2d 88 (2d Cir. 2001) The Second Circuit has
turned down a dead end street on this issue and
must reverse course sooner or later. McCarthy
24.91.2
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Trademark Dilution
3rd and 9th Circuits (1) Times Mirror Magazines
v. Las Vegas Sporting News, LLC, 212 F.3d
157 (3d Cir. 2000) (2) Avery Dennison Corp. v.
Sumpton, 189 F.2d 868 (9th Cir. 1999)
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Trademark Dilution
11th Circuit (1) Augusta National, Inc. v. Sir
Christopher Hatton, Inc., 41 U.S.P.Q.2d
1846 (N.D. Ga 1996) (2) Golden Bear
International, Inc. v. Bear USA Inc., 969
F.Supp. 742 (N.D. Ga. 1996) MORE...
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Trademark Dilution
11th Circuit (3) Michael Caruso Co. Inc. v.
Estefan Enterprises, Inc., 994 F.Supp.
1454 (S.D. Fla. 1998) (4) Carnival Corp. v.
Seaescape Casino Cruises, Inc., 74 F.Supp.
1261 (S.D. Fla. 1999) (5) Victoria's Cyber
Secret Ltd. v. V Secret Catalogue, Inc.,
161 F.Supp.2d 1339,1349 (S.D. Fla. 2001)
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Conclusion

• Emerging trends in dilution suggest that
  successful claims will be difficult to prove.
• Overall, there is a trend away from protecting
  marks from dilution.
• Accordingly, be cautious about advising clients
  that they may have a viable diultion claim.