What is trademark dilution in the United States?

A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. Some examples include: brand names, slogans, and logos. The term trademark is often used to refer to both trademarks and service marks.

Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services. To have a valid claim for trademark infringement it must be shown that it is likely consumers will confuse the products of the trademark owner with the products of the alleged trademark infringer.

Trademark dilution protects famous trademarks against the dilution of the distinctive nature of the trademark. Trademark dilution is different than trademark infringement in that only famous trademarks are protected, there is no need to prove a likelihood of confusion, nor is there any need to show competition between the goods of the plaintiff and the defendant. It is possible to bring a trademark dilution case even when the products accused of trademark dilution are different than the products of the trademark owner.

All famous trademarks are well known but not all well-known trademarks are famous. Whether or not a trademark is famous and protected from trademark dilution is something that the court determine in a trademark dilution case based on various factors those factors are:

The degree of distinctiveness of the trademark (either through the nature of the mark itself, or through acquired distinctiveness);
The degree of recognition of the trademark;
The duration and extent of use of the trademark;
The duration and extent of advertising for the trademark;
The geographic area in which the trademark has been used;
The “channels of trade”(The method used to distribute and market the products);
The use of the trademark by third parties; and
Whether the trademark was federally registered.

To have a valid claim for trademark dilution it must be shown that a famous trademark is being diluted through either blurring or tarnishment. The factors the court considers are:

the degree of similarity between the mark or trade name and the famous mark;
the degree of inherent or acquired distinctiveness of the famous mark;
the extent to which famous mark is engaging exclusive use of the mark;
the degree of recognition of the famous mark;
whether the user of the mark or trade name intended to create an association with the famous mark; and
any actual association between the mark or trade name and the famous mark.

Dilution by blurring occurs when the famous trademark is made less distinctive. Blurring occurs when the third party’s use of the trademark decreases the likelihood that the trademark will serve as a unique identifier of the famous trademark owner’s product and hinder the selling power of the famous trademark.

Dilution by tarnishment occurs when the reputation of famous trademark is damaged. Tarnishment occurs when the unauthorized use of a famous trademark associates the famous trademark with products that are of poor quality or which are portrayed in an unwholesome or distasteful context that is likely to reflect adversely upon the famous trademark owner’s product.

If a court finds that a famous trademark has been diluted the remedy is typically an injunction preventing further unauthorized use of the trademark. But if the court finds that a defendant willfully intended to “trade on the trademark owner’s reputation or to cause dilution of the mark,” the trademark owner may also be entitled to other remedies, including the defendant’s profits, damages, attorneys’ fees, and destruction of the infringing goods.

Trademark dilution is a complex legal concept and is typically fact specific. It is best that you consult with a trademark attorney to learn more about trademark dilution.