Understanding Trademark Dilution
The Lanham Act defines trademark dilution by prohibiting the unauthorized use of a trademark that is likely to cause dilution of the distinctive quality of a famous trademark. According to the Lanham Act, dilution occurs when a junior mark (the mark that is similar to, and used after, a well-known mark) either blurs or tarnishes the distinctive quality of a senior mark (the well-known mark).
Blurring occurs when the junior trademark creates an association with the senior trademark that impairs the senior trademark’s ability to function as a unique identifier of the senior trademark’s goods or services. Tarnishment occurs when the junior trademark associates the senior trademark with negative or unsavory connotations, thereby tarnishing the senior trademark’s reputation and its ability to serve as a symbol of quality and reliability.
The Lanham Act provides remedies for trademark owners whose trademarks have been diluted, including injunctions to prevent further use of the diluting trademark and monetary damages to compensate for harm to the senior trademark. In determining whether dilution has occurred, the Lanham Act considers several factors, including the similarity of the trademarks, the degree of recognition of the senior trademark, the degree of similarity between the goods or services, and the degree of care exercised by consumers when purchasing the goods or services.
How To Identify Trademark Dilution
According to the TMEP, to determine whether dilution has occurred, the examiner must first determine if the senior trademark is famous. The fame of a trademark is determined by considering factors such as the duration, extent, and geographic reach of advertising and publicity of the trademark, the degree of recognition of the trademark in the relevant trading areas, and any registrations and court decisions involving the trademark.
If the senior trademark is found to be famous, the examiner must then determine if the junior trademark is likely to cause dilution of the senior trademark’s distinctiveness. This is determined by considering factors such as the similarity of the trademarks, the similarity of the goods or services, the degree of care exercised by consumers when purchasing the goods or services, and any evidence of actual dilution.
Examples of Famous Trademark Dilution Cases
Here are a few examples of trademark dilution cases that were decided by the federal courts:
These cases provide examples of how federal courts have interpreted the concept of trademark dilution and the factors that are considered in determining whether dilution has occurred. They also demonstrate the importance of protecting famous trademarks from unauthorized use that is likely to dilute their distinctiveness.
Is Trademark Dilution A Type of Trademark Infringement?
Trademark dilution is a type of trademark infringement under the Federal Trademark Dilution Act of 1995. The Federal Trademark Dilution Act provides protection against dilution of a famous trademark by blurring or tarnishment. This means that under the Federal Trademark Dilution Act, the owner of a famous trademark can take legal action against a party that is using a similar trademark in a way that weakens the distinctive quality of the famous trademark.
Trademark dilution is considered a type of trademark infringement under the Lanham Act, which is the federal trademark statute in the United States. The Lanham Act provides for the protection of trademarks from infringement and dilution, which means that it protects the owners of famous trademarks from unauthorized uses that might weaken the distinctive quality of the trademark. The Lanham Act specifically provides for both dilution by blurring and dilution by tarnishment, which are both forms of dilution.
What Remedies Are Available To Stop Dilution?
Several remedies may be pursued for trademark dilution, including:
These remedies are available to trademark owners who can prove that their trademark has been diluted in violation of the Lanham Act. The specific remedy or remedies available in a particular case will depend on the specific facts and circumstances of the case.
Looking For Trademark Assistance?
We recommend hiring a trademark attorney to assist with pursuing remedies for trademark dilution. A trademark attorney can help you navigate the complex legal procedures involved in protecting your trademark, and can provide guidance and advice on the best course of action in your specific case. They can also represent you in legal proceedings, draft and file necessary legal documents, and negotiate settlements on your behalf. If you need trademark assistance, our trademark attorneys can help. Simply fill out the contact form below or give us a call. We will respond to all trademark inquiries within 1 business day.