Trademark Dilution Defined
Dilution is one of the more powerful trademark causes of action, as it does not rely on purchaser confusion as an element to be proven. Dilution is designed to protect the distinctive value of a famous mark that is tarnished or weakened by use of the famous mark on either similar or dissimilar goods and services. It is this broad based protection of a famous mark over a wide spectrum of goods and services that makes dilution a favored avenue for attack in domain name disputes. Basically, dilution protects the owner of the famous mark from others unfairly benefiting from the goodwill and reputation of the famous mark that its owner worked to establish.
Another benefit of a dilution case is that the famous mark need not be federally registered, although federal registration could be beneficial in helping establish fame and ownership for the mark. The same holds true for most states in that a state trademark registration is not required for a state based dilution claim. This would apply for instance in the case of a celebrities name, which or course as a surname is not registerable as a trademark, but could suffer dilution through blurring and tarnishment.
The offending mark can be the same as the famous mark or substantially similar and is required to be blurring the famous mark’s distinctive quality or otherwise tarnish the famous mark’s image.
Requirement that Mark be Famous
All is not perfect however, as the one stiff requirement of bringing a dilution claim is that the mark must be famous and have a distinctive quality. Now for the question, is your mark famous and distinctive enough to bring a dilution claim? There are a number of factors, with the broad based concept that your mark must be known outside of its associated classes of registration or known across multiple goods and service classes.
The typical factors looked are:
The degree of inherent or acquired distinctiveness of the mark.
The duration and the extent of use of the mark in connection with goods and services with which it is used.
The duration and the extent of advertising and publicity of the mark.
The geographical extent of the trading area in which the mark is used.
The channels of trade for the goods and services with which the mark is used.
The degree of recognition of the mark in the trading areas and channels of trade used by the mark’s owner and also use by the person or entity that action is sought against.
The nature and extent of use of the same or similar marks by third parties.
Whether the mark was registered under the former trademark acts or on the principal federal register.
Mark fame does not mean that the mark needs to be well known among the general public in total, however, the mark should be known enough to have an established distinctive goodwill that others seek to unfairly take advantage of.
Dilution requires that the offending mark lessen the capacity of the famous mark to identify and distinguish its associated goods and services, this can be further broken down into “blurring” and “tarnishment”. Blurring is the weakening of the famous marks goods and services identification through the use of the offending mark on dissimilar goods and services. Tarnishment of a famous mark is the use of the offending mark on either inferior goods or services or in an unflattering context.
Issues looked at in a dilution claim between the famous mark and the offending mark may include:
Famous mark distinctiveness in recognition
Similarity of the famous mark and offending mark
Proximity of the goods or services
Interrelationship among the distinctiveness of the famous or senior mark, the similarity of the offending of junior mark, and the proximity of the goods or services.
Shared consumers and geographic limitations
Sophistication of consumers
Actual confusion between the senior and junior mark
The descriptive and referential quality of the junior mark
Harm to the junior mark owner and delay in bringing an action by the senior mark owner
The senior marks past record of mark enforcement
Dilution Claim Defenses
The offending or junior mark can assert a number of defenses against a dilution claim by the famous mark owner, the primary one of which is to assert that the senior mark is not famous or distinctive. Other defenses include parody, satire, free speech issues, no actual dilution occurred, and ownership dispute of the senior mark.
Other defenses include, “fair use” of the senior mark in comparison advertising or promotion to identify the competing goods or services, non commercial use of the senior mark, and news reporting / commentary.
Damages
Injunctions and monetary damages are available form the offending or junior mark. Monetary damages require a willful intent to trade on the famous marks reputation or to cause dilution of the famous mark. The monetary damages can possibly escalate to treble damages and attorneys fees in exceptional cases.