Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

The Intellectual Property StrategistKickerFeaturesSectionsNewsLJN Newsletters

The TDRA Turns Two: But Are Trademark Owners Better Off?

By Michael A. Bucci and Lex Paulson
October 28, 2008

When the Federal Trademark Dilution Act (“FTDA”) was enacted in 1996, it was expected to provide much-needed uniformity and consistency to the protection of famous marks, not to fundamentally change the traditional standard for proving trademark dilution. Under the traditional standard, as adopted in many states, a trademark owner could protect against another's use of the same or similar mark even on noncompeting goods if it could show that such use was likely to blur (or weaken) the distinctive significance of the senior user's mark.

The U.S. Supreme Court, however, saw things differently. In its 2003 decision in Moseley v. V. Secret Catalogue, 537 U.S. 418 (2003), the Court found that the FTDA's language required a showing of “actual dilution,” not “likelihood of dilution.” The Court offered little guidance on how to prove an actual lessening of a mark's distinctive significance, but a few things seemed certain: First, consumer surveys increasingly would be necessary and, more generally, it had just become considerably more difficult to prove a federal dilution claim.

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
Why So Many Great Lawyers Stink at Business Development and What Law Firms Are Doing About It Image

Why is it that those who are best skilled at advocating for others are ill-equipped at advocating for their own skills and what to do about it?

Bankruptcy Sales: Finding a Diamond In the Rough Image

There is no efficient market for the sale of bankruptcy assets. Inefficient markets yield a transactional drag, potentially dampening the ability of debtors and trustees to maximize value for creditors. This article identifies ways in which investors may more easily discover bankruptcy asset sales.

The DOJ's Corporate Enforcement Policy: One Year Later Image

The DOJ's Criminal Division issued three declinations since the issuance of the revised CEP a year ago. Review of these cases gives insight into DOJ's implementation of the new policy in practice.

A Lawyer's System for Active Reading Image

Active reading comprises many daily tasks lawyers engage in, including highlighting, annotating, note taking, comparing and searching texts. It demands more than flipping or turning pages.

Protecting Innovation in the Cyber World from Patent Trolls Image

With trillions of dollars to keep watch over, the last thing we need is the distraction of costly litigation brought on by patent assertion entities (PAEs or "patent trolls"), companies that don't make any products but instead seek royalties by asserting their patents against those who do make products.