question.jpgIn Trademarks

What is dilution?

Trademark dilution occurs where someone owns a famous mark and someone else uses a similar mark which causes the famous mark to be weakened. There are federal and state laws known as antidilution statutes which are intended to prevent such trademark dilution. Unlike with trademark infringement, these laws do not require there to be any likelihood of confusion between the marks, and the related goods and services do not have to be competitive. Instead, the antidilution laws protect strong marks from losing their public association with a particular product, and the issue of trademark dilution therefore focuses on whether there is any “blurring” or “tarnishment.”

Blurring is where someone uses a mark, which takes away some of the strength of the famous trademark, in some different context - while this may not confuse consumers (because it’s being used in a context different from how the famous mark is used), it may weaken the famous mark’s ability to uniquely and distinctively identify a source of goods and services. For example, if someone wanted to use the mark KODAK in connection with the sale of a beverage, there would not be a likelihood of confusion between that beverage and KODAK brand film. However, that use could weaken the strength of the KODAK trademark because consumers would now begin to doubt whether a KODAK branded product comes from the Eastman Kodak Company. As such, the Eastman Kodak Company could likely prevent the beverage seller from using the KODAK mark under the antidilution statutes.

Tarnishment is where someone uses a mark which causes the famous mark to be linked (in the mind of the consumers) with inferior quality products, or uses the famous mark in an unwholesome context. For example, suppose an adult website used the MICKEY MOUSE trademark – while consumers would not likely be confused and think that Disney Enterprises runs the website, it would still serve to portray Disney’s mark in an unwholesome context. As such, Disney could prevent this usage under the antidilution statues.

Under the federal antidilution law (the Federal Trademark Dilution Act), the owner of a famous trademark cannot obtain money damages for dilution unless he can prove that the other party willfully intended to dilute the famous trademark or otherwise trade on the mark’s famous reputation.