Trademark dilution laws were created to protect the distinctive quality of a trademark from deterioration caused by its use on dissimilar products or non-competing goods. In essence, trademark dilution laws are created to provide a fair playing ground in the game of competition.  If competitors and non-competitors were allowed to freely copy the famous marks, the competitors would inevitably receive a free train ride on the famous mark owner’s goodwill and reputation.  

Trademark dilution occurs when the use of a famous mark causes the likelihood of confusion.  Direct confusion is not required.  What is required is evidence that the use of the famous mark is whittled away the association between the consumer and the owner for the famous mark. Proving dilution is very challenging. 

To prove trademark dilution the Federal Trademark Dilution Act of 1995 requires proof that:

• the mark is famous

• the defendant is making commercial use of the mark in commerce

• the defendant’s use began after the mark became famous

• the defendant’s use of the mark dilutes the quality of the mark by diminishing the capacity of the mark to identify and distinguish goods and services. 

Additionally, most states have enacted anti-dilution statutes.  Check your state’s statutes for more information.

There are two forms of dilution.  Blurring and Tarnishing.

Blurring

Blurring occurs when erosion of the distinctive qualify of the mark.  In essence, the use alleged improper use of the famous mark blurs the consumer’s perception of the association between the mark and its owner. 

Tarnishing

Tarnishing occurs when a famous mark or a mark similar to the famous mark is used in a bad light and as a result tarnishes the commercial image or reputation of the famous mark owner’s product.  Tarnishing creates a “negative image of the famous mark in the public’s mind through an association with unsavory, unrelated goods or services….”

REFERENCES:

• 15 U.S.C.S. 1125 (c).

• Trademark Dilution, at http://www.bitlaw.com/trademark/dilution.html (last visited Apr. 11, 2005).

• Stanely U. Paylago, Search Engine Manipulation: Creative Use of Meta tags or Trademark Infringement, at http://www.idea.piercelaw.edu/articles/40/40_3/15.Paylago.pdf (last visited Apr. 11, 2005).