Trademark Dilution

1
Trademark Dilution

• No goods competition, no likelihood of confusion
  regarding similar goods what can you do?
• Protect your reputation!

2
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

3
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

4
Federal Law versus State Law

• Federal Law
• protects only marks against dilution, not trade
  names, which are not used as trademarks
• provides a damage remedy in cases of willful
  dilution
• provides import exclusion of offending goods
• protects only famous marks

• State Law
• protects trade names and other trademarks
• provides only injunctive relief
• no power to exclude imports of offending goods
• protects strongly distinctive marks, not just
  famous marks

5
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

6
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

7
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 competitors mark
  for the purpose of achieving a negative emotional
  or subliminal effect in comparative advertising

8
Types of Dilution

• Blurring
• described as leeching or erosion, blurring
  denotes a loss of distinctiveness, uniqueness,
  and selling power such that a prior strong mark
  becomes weak
• the ? must show that ?s use of the allegedly
  diluting mark is likely to establish some sort of
  association in the public mind b/w ?s mark and
  the ?s goods
• Three factors are strength of ?s mark, the
  similarity b/w ?s and ?s marks, and ?s intent
  to siphon the goodwill and reputation of ?s mark

• Tarnishment
• active impairment of ?s mark through negative
  association
• the concern is with a loss of goodwill or
  reputation for a specific level of quality
• Three factors are the degree of association
  between ?s mark and ?s use (similarity), the
  similarity of the target market, and ?s intent
  to achieve commercial gains or advantages

9
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-- its 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)