Trademark Law: Trademark Dilution

Trademark dilution laws aim to preserve the distinctiveness and reputation of well-known trademarks by preventing their unauthorized use in a manner that could diminish their value.

Blurring occurs when the unauthorized use of a trademark weakens the distinctiveness of the original mark by creating a mental association between the two marks in the minds of consumers.

In order to establish trademark dilution, the trademark owner must demonstrate that the unauthorized use of the mark has resulted in a diminution in the value of the original mark.

Courts consider various factors, including advertising, duration of use, and geographic scope, to determine whether a trademark has achieved fame and is entitled to protection against dilution.

Courts may grant injunctions to prevent further dilution, award damages to compensate the trademark owner for any harm suffered, and order an accounting of profits to ensure that the infringer does not benefit from their unlawful conduct.

Blurring can occur even when the unauthorized use of a mark is on a non-competing product, as long as it creates a mental association between the two marks in the minds of consumers.

Tarnishment occurs when the unauthorized use of a mark damages the reputation or image of the original mark, such as by using it in a vulgar or offensive manner.

Trademark dilution focuses on the unauthorized use of a mark that is similar to a famous mark, even if the use is not likely to cause confusion, while trademark infringement focuses on the unauthorized use of a mark that is identical or substantially similar to a registered mark.

The Trademark Dilution Revision Act of 2006 made significant changes to trademark dilution law, including expanding protection to marks that are not famous, creating a new cause of action for blurring, and establishing a rebuttable presumption of irreparable harm.

In the case of McDonald's v. Burger King, McDonald's successfully argued that Burger King's use of the phrase 'Have it your way' diluted the distinctiveness of McDonald's famous slogan 'I'm lovin' it'.

Defenses to a trademark dilution claim may include fair use, nominative fair use, and comparative advertising, among others.

In trademark dilution cases, intent may be relevant in determining whether there is blurring or tarnishment. For example, if the unauthorized use of a mark is intended to harm the reputation of the original mark, this may be evidence of tarnishment.

Nominative fair use allows the use of a trademark in certain situations, such as when it is used in a news report or in a scholarly article.

The Polaroid factors, which include factors such as the distinctiveness of the mark, the similarity of the marks, and the extent of the advertising and promotion of the marks, are used to determine whether there is blurring or tarnishment.