Trademark Dilution: Everything You Need to KnowTrademark Law ResourcesStartup Law ResourcesIntellectual PropertyTypes of TrademarksHow To Register A Trademark
Trademark dilution is a legal clause that allows a company to prevent others from using a mark in a way that would lessen the unique standing of the trademark. 4 min read
What is Trademark Dilution?
Trademark dilution is a legal clause that allows the company to prevent others from using such a mark in a way that would lessen the unique standing of the trademark. The Federal Trademark Dilution Act of 1995 states the owner of a trademark can take legal action against anyone who purposefully blurs or tarnishes a trademark.
What is Trademark Tarnishment?
When there is a risk the product or service, being offered by the party using a similar trademark, is inferior, tarnishment is possible. This means the trademark holder could be at risk for damage to their reputation.
What is Trademark Blurring?
If the use of certain symbols, language or other mark which could cause consumers confusion as to who owns the product, the trademark is considered blurred.
Trademark Dilution: Blurring v. Tarnishment
Under the Federal Trademark Dilution Act (“FTDA”), 15 USC 15 §1125, trademark dilution is “the lessening of the 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.”
The same Act defines dilution by blurring as an association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.
Proving Trademark Dilution
Interestingly enough, the Trademark Act does not require the owner to prove there is a likelihood their trademark will be confused with another nor do they need to show there is a possibility of competition. Instead, it is possible to show dilution when the owner of the trademark feels there is a possibility of harm to their brand.
The Act does not cover any action which could be considered fair use: For example, advertising that is comparing products, news reporting and commentary or website pages which are considered non-commercial could all use a trademark and not be in violation of the Act.
What is the trademark law?
Trademark law protects logos, phrases or words that readily identify a specific company. For example, Apple's logo is distinct and owned by the company. This means another company cannot adopt the name "Apple" or an apple logo and use it in a manner that could be confusing to consumers.
What does it mean to be a registered trademark?
A company that uses "®" in their logo or name is considered to have a registered trademark. Registration is a federal process that simply requires the owner of the mark to identify the mark, associate the goods and services provided by the owner of the mark and files a trademark application. The enforcement of the use of the trademark lies with the owner of the trademark.
Trademark Language Designations
Some consumers have seen various marks associated with trademarks. This designates the mark is unique to their company. Typically you will see:
TM - this is for unregistered trademarks and may be used even if an application to register a trademark is denied. This designates the provider of goods is using a symbol, logo or phrase as a trademark of their brand. There is no protection under the Trademark Act for the user.
SM – this is a service mark versus a mark identifying products. This would be used for someone who is providing a service using a specific logo or phrase. As with unregistered trademarks, service marks are unregistered and therefore the owner has no protection under the Trademark Act.
® - this is the designation showing a trademark or service mark has been registered and is the owner of the person or business who completed such registration. The rights to the logo, phrase or words are protected under the Trademark Act.
What is a trademark and what does it protect?
Trademark protection comes when you select a phrase, a word, a symbol or a logo that is unique to your business. Once it is registered, the trademark protects you from others using it in a manner that could harm your business or be readily confused.
What is a trademark violation or infringement?
Violation or infringement occurs when a trademark or service mark is used on related goods and services and is likely to cause confusion to consumers. The courts will look at the following:
How strong the service or trademark is
How closely related the goods are (for example, a similar trademark on a car and a pad of paper would likely not be a violation)
How similar the marks are; an apple and an orange are distinctly different
Whether the owner of the trademark or service mark show there is actually confusion
How the products are marketed; if one mark is advertised on television and the other only on by word of mouth there may be different markets
How likely the buyer of the service or product is likely to be; people take different levels of care buying clothing and computers
What was the intent of the person using someone else's trademark; this includes deliberate connection, etc.