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Trademark Dilution: Likelihood of Confusion Among the Courts?

By Joseph V. Norvell and Joseph T. Kucala, Jr.
August 18, 2003

As it stands now, if your company brings a trademark dilution claim in federal court, you are risking a ruling that your company's brand is not diluted or, even worse, 'not famous.' There is currently a great deal of confusion among the courts over the concept of trademark dilution, and none of the recent decisions are helping to clear the air. Courts across the country continue to struggle with the very concept of trademark dilution and its application. Issues the courts are struggling with include: How much fame is required for a mark to be 'famous' under the statute? What marks deserve protection under the Federal Trademark Dilution Act (FTDA)? What factors should a court consider when evaluating a dilution claim? Is proof of actual harm or injury required in order to prevail on a dilution claim? These issues are not easily resolved, and it is only the issue of proof of actual harm or injury on which the Supreme Court will provide guidance this spring. In light of these other continued uncertainties, companies should carefully analyze their case before putting their most prized brands at risk.

What is dilution?

Congress enacted the FTDA in 1995 in an attempt to provide more uniform relief than was available under state antidilution statutes. The FTDA defines dilution as 'the lessening capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception.' 15 U.S.C. ' 1127. The statute lists eight factors to be considered in determining whether or not a mark is famous. Id. Two distinct subsets of dilution have developed: 1) dilution by blurring occurs when a junior user's use of a mark 'blurs' the distinction between the junior and senior user; and 2) dilution by tarnishment occurs when the junior party's use of the mark has a negative or distasteful connotation, 'tarnishing' the senior user's famous mark.

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