Trademark Dilution: Protecting Famous Brands from Blurring and Tarnishment

Trademark Dilution: Protecting Famous Brands from Blurring and Tarnishment

For truly famous brands, trademark law offers a powerful layer of protection beyond the traditional likelihood of confusion standard: Trademark Dilution. The Federal Trademark Dilution Act (FTDA), codified in 15 U.S.C. § 1125(c), allows the owner of a famous mark to prevent others from using a similar mark, even if the goods or services are completely unrelated and there is no likelihood of consumer confusion.

The Two Forms of Dilution

Dilution occurs when the distinctiveness of a famous mark is weakened by unauthorized use. The law recognizes two primary forms:

1      Dilution by Blurring: This occurs when the distinctiveness of the famous mark is impaired because the public associates the famous mark with the defendant's mark. For example, if a company started selling "KODAK Pianos," the distinctiveness of the KODAK camera brand would be blurred, even though no one would confuse the source of the products. The court considers factors like the degree of similarity between the marks and the extent of the famous mark's recognition.

2      Dilution by Tarnishment: This occurs when the famous mark's reputation is harmed by the unauthorized use, often in connection with shoddy, unwholesome, or unsavory goods or services. For example, using a famous luxury brand's name on a low-quality or illicit product would tarnish the brand's reputation.

The Requirement of "Fame"

To claim dilution, the mark must be famous, meaning it is widely recognized by the general consuming public of the United States. This is a high bar, requiring evidence such as:

•       The duration and extent of use and advertising.

•       The volume of sales.

•       The extent of actual recognition of the mark.

Strategic Dilution Enforcement

Dilution claims are a strategic tool reserved for the most valuable brands. I use this claim to stop unauthorized uses that fall outside the scope of traditional infringement—such as a competitor using a similar name in a completely different industry—thereby ensuring the mark's unique association with my client's brand remains intact.

If your brand has achieved the status of "famous," I can deploy the powerful protections of the Federal Trademark Dilution Act to safeguard its unique identity and reputation from unauthorized use.

Legal Disclaimer

This article is intended for informational purposes only and does not constitute legal advice. The information provided herein is general in nature and may not apply to your specific circumstances. Trademark law is complex and constantly evolving. Therefore, you should consult with a qualified intellectual property attorney for advice tailored to your individual needs and situation. No attorney-client relationship is formed by reading this article.