| * This article is for non-lawyers, or attorneys | | | | dilution). This article explains the elements and scope |
| practicing in areas of law other than trademark law, | | | | of a federal cause of action for dilution for a mark. |
| seeking to familiarize themselves with the basics of | | | | Infringement is discussed in [Related Article]. Elements |
| trademark dilution. This article is Part I of a two part | | | | of a Federal Dilution Claim Section 43(c) of the |
| series. Introduction Trademark law has evolved to | | | | federal Lanham Act lays out the requirements for |
| give what is, in essence, a quasi-property right in a | | | | pleading and proving a federal dilution claim. 15 U.S.C. |
| "word, name, symbol or device" that identifies and | | | | § 1125(c). This section, which comes from |
| distinguishes one person's goods (or services) from | | | | legislation called of the Federal Trademark Dilution Act |
| those of another. 15 U.S.C. § 1127. The | | | | (FTDA), says states that the holder of a "famous |
| justification for this is twofold. First, to protect the | | | | mark" may stop another from using "in commerce" |
| public from confusion or deception about who is the | | | | an identifier that "is likely to cause dilution by blurring |
| source of a given product or, in the case of a | | | | or dilution by tarnishment." That definition sets up a |
| service mark, a given service. Second, to protect a | | | | neat four-part test courts can follow to determine if |
| business's investment in the goodwill in the mark. | | | | a mark has been, or is likely to be, diluted. To prove |
| Enforcement of such "right" typically takes one of | | | | dilution, then, a mark holder must establish all of the |
| two forms: "Infringement" or "dilution." Laws barring | | | | following: (1) the mark is distinctive and famous; (2) |
| trademark "infringement" seek to protect the first | | | | the defendant is using its own mark in commerce (3) |
| interest. They focus on whether consumers are likely | | | | the defendant's use begin after the plaintiff's (4) the |
| to be confused by the public use of two similar | | | | defendant's use is "likely" to cause dilution by blurring |
| marks. Conversely, laws governing "dilution" seek to | | | | or tarnishment 15 U.S.C. § 1125(c). A Distinctive |
| protect the second interest. In so doing, dilution | | | | and Famous Mark The Lanham Act lays out four |
| jurisprudence focuses on whether the owner's | | | | non-exclusive areas of proof that can weigh into |
| investment in a mark has been lessened or diminished | | | | whether a mark is sufficiently famous to warrant |
| when someone a third party uses a similar identifier. | | | | protection from the diluting use of a similar mark. |
| Put another way, it protects from a "free riding on | | | | These are: (1) the duration and extent of advertising |
| the investment" the trademark holder has made. I.P. | | | | or publicity of the mark; (2) the amount and breadth |
| Lund Trading ApS v. Kohler Co., 163 F.3d 27, 50 (1st | | | | of sales of the item; (3) the extent to which it is |
| Cir. 1998). Trademark Dilution is a Cause of Action in | | | | actually recognized by the public and (4) whether the |
| its Own Right Trademark dilution is not a mere | | | | mark was registered. 15 U.S.C. § 1125(c)(A). |
| fallback position for an unsuccessful someone who | | | | These factors are looked at on a "totality of the |
| was not able to prove infringement plaintiff. 4 | | | | circumstances" basis, to help a court decide if the |
| McCarthy on Trademarks and Unfair Competition | | | | mark is "widely recognized by the general consuming |
| § 24:70 (4th ed.) (citing 15 U.S.C. § 1127, | | | | public of the United States as a designation of source |
| and Playboy Enterprises, Inc. v. Netscape | | | | of the goods or services of the mark's owner." |
| Communications Corp., 55 F. Supp. 2d 1070 (C.D. Cal. | | | | Times Mirror Magazine, Inc. v. Las Vegas Sports |
| 1999)). Rather, it is a distinct wrong and, therefore, a | | | | News, LLC, 212 F.3d 157 (3rd Cir. 2000) The Lanham |
| distinct cause of action. The First Circuit explained this | | | | Act was amended in October 2006 and these |
| distinction rather eloquently in I.P. Lund Trading ApS v. | | | | factors are revised substantially from the list of eight |
| Kohler Co.: [I]f a cocoa maker began using the "Rolls | | | | included in the previous version of the law. Amending |
| Royce" mark to identify its hot chocolate, no | | | | 15 U.S.C.A. § 1125(c). Pub.L. 109-312, § 2, |
| consumer confusion would be likely to result. Few | | | | 120 Stat. 1730 (Oct. 6, 2006). It is unclear as yet |
| would assume that the car company had expanded | | | | whether the new formulation will change what marks |
| into the cocoa making business. However, the cocoa | | | | might be considered sufficiently "famous" to be |
| maker would be capitalizing on the investment the | | | | diluted. Under the earlier version, most courts |
| car company had made in its mark. Consumers readily | | | | disposed of the "fame" question summarily. E.g., |
| associate the mark with highly priced automobiles of | | | | Amica Online, Inc. v. IMS, 24 F. Supp. 2d 548 (E.D.Va. |
| a certain quality. By identifying the cocoa with the | | | | 1998). So it is possible that the "I know it when I see |
| Rolls Royce mark, the producer would be capitalizing | | | | it" nature of this inquiry might be unaffected. Under |
| on consumers' association of the mark with high | | | | the earlier formulation of the law, however, and as |
| quality items. Moreover, by labeling a different | | | | examples to illustrate how the factors historically |
| product "Rolls Royce," the cocoa company would be | | | | were applied, the following marks are some examples |
| reducing the ability of the mark to identify the mark | | | | of those that have been considered to be sufficiently |
| holder's product. If someone said, "I'm going to get a | | | | famous and distinctive to warrant protection: AOL, |
| Rolls Royce," others could no longer be sure the | | | | Barbie, Budweiser, Ford, Nike, NASDAQ, and |
| person was planning on buying an expensive | | | | Velveeta. America Online, Inc. v. IMS, 24 F. Supp. 2d |
| automobile. The person might just be planning on | | | | 548, 48 U.S.P.Q.2d 1857 (E.D. Va. 1998); Mattel Inc. v. |
| buying a cup of cocoa. Thus, the use of the mark to | | | | Jcom Inc., 48 U.S.P.Q.2d 1467 (S.D.N.Y. 1998); |
| identify the hot chocolate, although not causing | | | | Anheuser-Busch, Inc. v. Andy's Sportswear, Inc., 40 |
| consumer confusion, would cause harm by diluting the | | | | U.S.P.Q.2d 1542 (N.D. Cal. 1996); Ford Motor Co. v. |
| mark. I.P. Lund., 163 F.3d at 50. The concept of | | | | Lloyd Design Corp., 184 F. Supp. 2d 665, 62 U.S.P.Q.2d |
| dilution can be further subdivided in two categories: | | | | 1109 (E.D. Mich. 2002); Nike Inc. v. Variety |
| "Blurring" and "tarnishment." Blurring is best described | | | | Wholesalers, Inc., 274 F. Supp. 2d 1352, 1372 (S.D. Ga. |
| above in the I.P. Lund Trading ApS v. Kohler Co. | | | | 2003), aff'd, 107 Fed. Appx. 183 (11th Cir. 2004); Kraft |
| decision-to wit, it occurs when the "unique and | | | | Foods Holdings, Inc. v. Helm, 205 F. Supp. 2d 942, 63 |
| distinctive link" between the plaintiff's mark and its | | | | U.S.P.Q.2d 1353 (N.D. Ill. 2002). The following marks |
| goods or services is muddied and so its value is | | | | were deemed not sufficiently famous and distinctive |
| depressed. Tarnishment, occurs when a famous mark | | | | to justify protection: Avery Dennison, for office |
| is associated with an offensive or inferior good, or is | | | | supplies; Fun Ship, for a cruise line; Weather Guard, |
| portrayed in a degrading context, thus lessening the | | | | for vehicle tool boxes for contractors; We'll Take |
| value of the senior mark. In short, the nature of | | | | Good Care of You, as a slogan for a chain of retail |
| dilution is to eat away at the value of another's | | | | pharmacies. Avery Dennison Corp. v. Sumpton, 189 |
| trademark. And, in precluding the otherwise | | | | F.3d 868, 51 U.S.P.Q.2d 1801, 1806 (9th Cir. 1999); |
| competitive acts that might dilute a mark, the | | | | Carnival Corp. v. SeaEscape Casino Cruises, Inc., 74 F. |
| anti-dilution statute gives the mark-holder a much | | | | Supp. 2d 1261, 52 U.S.P.Q.2d 1920 (S.D. Fla. 1999); |
| broader property right than a mere claim for | | | | Knaack Mfg. Co. v. Rally Accessories, Inc., 955 F. |
| infringement does. E.g., The Toro Co. v. Torohead, | | | | Supp. 991, 42 U.S.P.Q.2d 1649 (N.D. Ill. 1997); |
| Inc., 2001 WL 1734485 (Trademark Tr. & App. Bd.), | | | | Genovese Drug Stores, Inc. v. TGC Stores, Inc., 939 |
| 61 U.S.P.Q.2d 1164. (It is a "bedrock principle of | | | | F. Supp. 340 (D.N.J. 1996). Use in Commerce "Use," |
| trademark law" that multiple uses of a term as a | | | | very simply put, means commercial use. Mattel, Inc. v. |
| mark can co-exist when used for non-related goods. | | | | MCA Records, Inc., 296 F.3d 894, 903 (9th Cir. 2002) |
| Dilution upsets this balance and enables the owner of | | | | (the inquiry is basic, thought the requirement seems |
| a famous mark to prohibit the use or registration of | | | | "ungainly.") In other words, the defendant must have |
| the same or substantially similar mark even on | | | | employed the famous and distinctive mark - or one |
| unrelated goods.) Dilution Cases Are Subject to a | | | | nearly identical to it - to sell goods other than those |
| High Degree of Scrutiny Dilution is thus deemed to be | | | | produced or authorized by the mark's owner. |
| an "extraordinary remedy." Advantage Rent-A-Car | | | | Panavision Int'l, LP v. Toeppen, 141 F.3d 1316, 1324-25 |
| Inc. v. Enterprise Rent-A-Car Co., 238 F.3d 378, 381 | | | | (9th Cir. 1988); Mattel, Inc., 296 F.3d at 903 (dilution |
| (5th Cir. 2001). As the Fourth Circuit explained: [W]e | | | | found where MCA created and sold to consumers in |
| simply cannot believe that, as a general proposition, | | | | the marketplace commercial products - the Barbie Girl |
| Congress could have intended, without making its | | | | single and the Aquarium album - that bear Mattel's |
| intention to do so perfectly clear, to create property | | | | "Barbie" mark). A non-commercial use of another's |
| rights in gross, unlimited in time (via injunction), even | | | | mark, on the other hand, is specifically exempt from |
| in 'famous' trademarks. Ringling Bros.-Barnum & Bailey | | | | the Lanham Act. This ensures that references to |
| Combined Shows v. Utah Division of Travel | | | | marks that would otherwise fall within the penumbra |
| Development, 170 F.3d 449, 459 (4th Cir. 1999). See | | | | of First Amendment protections are not |
| also Nabisco, 191 F.3d at 224 n.6 (quotation marks | | | | inadvertently, and unconstitutionally, also brought |
| omitted) ("We agree that the dilution statutes do not | | | | within the ambit of the statute. Mattel, Inc., 296 F.3d |
| prohibit all use of a distinctive mark that the owners | | | | at 903. As such, the following activities are specifically |
| prefer not be made .... [W]e agree with the Fourth | | | | authorized by statute: 1. Advertising that invites the |
| Circuit that the dilution statutes do not create a | | | | consumer to compare goods or services; 2. Speech |
| 'property right in gross"'); I.P. Lund, 163 F.3d at 47 | | | | that "parodies, criticizes or comments upon" the |
| ("[T]he standard for fame and distinctiveness | | | | famous mark owner, or the goods or services |
| required to obtain anti-dilution protection is more | | | | identified; 3. In news reporting or commentary; 4. In |
| rigorous than that required to seek infringement | | | | any other non-commercial fashion. 15 U.S.C. § |
| protection"). Thus, a plaintiff in a dilution case is likely | | | | 1125(c)(3). Part II of this series will issue in two |
| to face an uphill battle. 4 McCarthy on Trademarks | | | | weeks. |
| and Unfair Competition § 24:89.50 (4th ed.); e.g., | | | | Mr. Taillieu is a partner of Zuber & Taillieu LLP. He |
| The Toro Co. v. Torohead, Inc., 2001 WL 1734485 | | | | earned his J.D. with highest honors from George |
| (Trademark Tr. & App. Bd.), 61 U.S.P.Q.2d 1164 | | | | Washington University School of Law, where he |
| (stating that unlike in trademark infringement cases, | | | | graduated #1 in the day class and was Managing |
| doubts are not resolved in favor of the party claiming | | | | Editor of the Law Review. |