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

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.

With the Trademark Dilution Revision Act of 2006 (the “TDRA”), Congress acted to firm up the path toward a successful dilution claim. Among other amendments, the TDRA re-established “likelihood of dilution” as the applicable test and set forth a list of non-exclusive factors courts could consider in determining whether blurring is likely to occur. See 15 U.S.C. '1125(c). At the same time, however, Congress tightened up the requirements for proving fame, requiring that a mark be “widely recognized by the general consuming public” of the United States and rejecting the notion that “niche” market fame would be sufficient. See 15 U.S.C. '1125(c)(2)(A).