Trademark dilution claims proving fame [Best Answer]

Last updated : Aug 26, 2022

How do you prove a dilution?

To establish a claim of dilution, the mark must have become famous before use of the allegedly diluting mark or trade name began.

What is an example of trademark dilution?

It occurs when unauthorized use of a famous mark weakens or impairs the distinctiveness of the mark. A hypothetical example may be use of GOOGLE as a mark on toothpaste, such that consumers who previously associated the GOOGLE mark solely with the tech giant's products begin to also associate the mark with toothpaste.

What are the factors to analyze a dilution case?

The following factors are relevant to a dilution claim, the extent, duration and geographic reach of advertising and publicity, and whether it was the mark owner or a third party who advertised or publicized the mark; amount, volume, and geographic extent of the sales, recognition of the mark, and if the mark is ...

Which is an example of trademark dilution by blurring?

1° Dilution-by-blurring is the most common dilution claim, and occurs when a consumer views a junior, unauthorized use of a famous mark and is reminded of the more famous mark. 1 Famous examples of dilution-by-blurring include Dupont shoes, Buick aspirin, and Kodak pianos.

How do you prove a fame trademark?

Statutory Fame Factors The duration, extent, and geographic reach of advertising and publicity of the mark, by either plaintiff or third parties. The amount, volume, and geographic extent of sales of goods or services offered under the mark. The extent of actual recognition of the mark.

What is the difference between trademark dilution and infringement?

Dilution differs from normal trademark infringement in that there is no need to prove a likelihood of confusion to protect a mark. Instead, all that is required is that use of a "famous" mark by a third party causes the dilution of the "distinctive quality" of the mark.

What must a plaintiff prove to prevail in a cause of action for trademark dilution?

To support a trademark infringement claim in court, a plaintiff must prove that it owns a valid mark, that it has priority (its rights in the mark(s) are "senior" to the defendant's), and that the defendant's mark is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or ...

How do you avoid a diluted trademark?

1. Trademark search. Before registering your trademark, conducting an exhaustive trademark search is a must.
2. Register your trademark and actively use it.
3. Trademark monitoring.
4. Litigation process.
5. Trademark infringement removal.

How do you prove a trade dress infringement?

To sue for infringement of trade dress, you must be able to articulate and prove that your trade dress is inherently distinctive, or has acquired secondary meaning, and that the junior use is likely to cause consumer confusion.

What constitutes a famous trademark?

Famous marks are those that have an immediate connection in the minds of the consumers with a specific product or service and the source of that product or service. Examples of famous trademarks are APPLE, COCA-COLA, MCDONALDS and NIKE.

What are dilution claims?

In a dilution claim, a trademark owner asserts that their famous mark is entitled to protection from use that causes harm to the mark's reputation or distinctiveness.

What is doctrine of dilution?

'Trademark Dilution Doctrine' is basically a trademark law concept that permits the owner of a famous mark to forbid others from using that mark in a way which would harm its uniqueness.

What are the most common defenses to trademark infringement?

The most common defenses in trademark infringement, unfair competition and trademark dilution suits include descriptive fair use, nominative fair use, laches, unclean hands and trademark misuse, fraud in obtaining the registration, and application of the First Amendment.

Can you dilute your own trademark?

Overview of US dilution law Under US dilution law, the owner of a famous mark can stop others from commencing use of a mark in commerce which is likely to dilute the famous mark, even in the absence of actual or likely confusion, competition or actual economic injury.

How would you tarnish the reputation of trademark?

A trademark is tarnished when there is an association between a famous mark and another mark, and the association harms the reputation of the famous mark. Often, a negative association involves alcohol, criminal activity, sex or drugs.

What is famous mark?

A famous or well-known mark is a trademark that, in view of its widespread reputation or recognition, may enjoy broader protection than an ordinary mark.

What are the 8 elements used to determine infringement of a trademark?

In determining the likelihood of confusion in trademark infringement actions the courts look to these eight factors: the similarity of the conflicting designations; the relatedness or proximity of the two companies' products or services; strength of the plaintiff's mark; marketing channels used; the degree of care ...

What happens to a trademark if it becomes too generic?

A brand mark that becomes generic loses trademark protection, brand value, and profit.

What are the 4 types of trademarks?

• Generic. A generic term is a common description that does not receive trademark protection.
• Descriptive.
• Suggestive.
• Arbitrary or Fanciful.

What are 3 things that determine trademark infringement?

Thus, "use," "in commerce," and "likelihood of confusion" are three distinct elements necessary to establish a trademark infringement claim.

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Write a comment

a mark is considered famous if it is widely recognized by the general consuming public in the united states as a designation of the source of the goods or services of the mark's owner the mark itself does not have to be inherently distinctive a mark that has acquired distinctiveness can become a famous mark in many ways acquiring fame is similar to acquiring secondary meaning and is sometimes called super secondary meaning in addition the mark doesn't even have to be a registered mark fame in a small niche market however is not sufficient evidence of fame for a dilution claim courts consider a number of factors when deciding if a mark is famous including advertising volume and geographic reach of sales the extent of actual recognition of the mark by consumers and use of the mark in popular culture and in unsolicited media among other factors

Thanks for your comment Brett Loera, have a nice day.
- Rusty Grierson, Staff Member

okay let's talk about one of the most maddening subjects in trademark law and that is the law of delusion and dilution law exists to do two things it exists to protect the distinctiveness of a mark and that is the cause the sub-cause of action in the dilution statute known as blurring and also the protection of a mark's reputation and that is the sub-cause of action known as tarnishment and so those two ideas are expressed in the federal delusion statute with the text the owner of a famous mark that is distinctive inherently or through acquired distinctiveness shall be entitled to an injunction against another person who commences use of a mark or trade name in commerce that is likely to cause delusion by blurring or delusion by tarnishment of the famous mark regardless of the presence or absence of actual or likely confusion and so that's that's the key thing this is a trademark cause of action that goes beyond likelihood of confusion and will allow a trademark holder to get relief even in the absence of a likelihood of confusion so right away we notice what kind of marks are we dealing with here we're dealing with so-called famous marks and so this is any famous mark it doesn't matter if the distinctiveness is acquired or inherent and so a famous descriptive mark you know one that got protection because it has secondary meaning is eligible for protection under the delusion statute so what constitutes a famous mark a mark is famous if it is widely recognized by the general consuming public of the united states and there are multiple factors that go into this advertising sales recognition registration now the the trademark delusion statute released the federal trademark delusion statute was amended in the mid-aughts to clarify a debate that had existed initially under the law whether or not you could get dilution protection for so-called niche fame if you were famous in a particular area or in a particular kind of market would you get delusion protection there there was a divide in the courts and so the amendments in the mid-decade kind of clarified famous means famous for the public at large and so you know is this sensible one thing that it does is it you know constrains the cause of action and given the vagueness of the dilution cause of action as we'll discuss that represents an important check on the other hand of course um we may wonder in so far as we believe that delusion captures some kind of actual real harm that trademark law ought to go after it's possibly it's it's possibly the case that famous marks are actually more resistant to dilution than non-famous marks and you know but this is kind of a problem we'll be dealing with later on that it's so hard to measure the cause of action or the harm that we're trying to police with delusion in the first place and maybe it's the case that only famous marks are the target of you know deluding activities and so what makes for a famous mark in practice some marks that have been held to be famous i have some a list from mccarthy on the screen audi america's team for the dallas cowboys apple iphone its trade dress motown for music and recordings nike pepsi rolex starbucks and some marks now that have been held to be not famous things like the app store biosafe coach maker's mark's red wax dripping seal has been deemed not to be not to be famous as has the university of texas longhorn logo so let's talk about the liability standard and interestingly the prior to amendment the supreme court had held that to have a cause of action for delusion you need to prove that there has been actual delusion alleging that it is merely a likelihood is not good enough and the and congress responded to that supreme court ruling by amending the statute to say that a likelihood of delusion suffices so what exactly is delusion it is not confusion so what exactly are we going after here and so the seminal law review article that kind of gave rise to the cause of action in the states prior to the eventual codification in federal law comes from schechter and he defined it as quote the gradual whittling away or dispersion of the identity and hold upon the public mind of the mark or name by its use on non-competing goods and so this idea that we need to protect a marked selling power is one that is certainly not uncontroversial is that something that ought to belong to the trademark holder and recall we've had this discussion over the course of the term about the question about how powerful do we think brands ought to be and so here we have a cause of action dedicated to the proposition that they should be powerful indeed and so there's a comment from the restatement tarnishment and delusion of distinctiveness although conceptually distinct both undermine the selling power of a mark the ladder by disturbing the and this i love this part the conditioned association of the mark it sounds sort of pavlovian with a prior user and the former by displacing positive with negative associations thus tarnishment and delusion of distinctiveness reduce the value of the mark to the trademark holder and of course implicit in all this is the conclusion that that is something that federal law ought to do or dilution law ought to do and in this case we have a federal statute that we're going to be focused on here so let's start with the idea of delusion by blurring and so what is a what is blurring and so under the statute delusion by blurring is association arising from the similarity between the mark or tray name and famous mark that impairs the distinctiveness of the famous mark so the famous mark doesn't do its job as well once it has fallen prey to blurring activities but note that under the text merely associating your mark with a famous mark ought not to be good enough right it's not association it's association that actually impairs the distinctiveness of the famous mark and so what could this possibly mean imagine we're in the car market and we have rolls royce cadillac toyota chevy and so rolls-royce is a distinct mark among the several kinds of sources of cars that one could possibly consider for purchase and imagine now there's rolls-royce gum rolls-royce paint rolls-royce cabinets computers sports coats carpet cleaners the idea the assumption the belief the faith of delusion law is that if you have rolls-royce in these other realms and there is no actual confusion or no actual likelihood of confusion that rolls royce in some way is the source or sponsor or licensor of the mark in these other realms there is nonetheless the possibility that it will be that much harder for rolls-royce to perform its trademark function in the car context how does this translate to consumer harm right i mean maybe or at least the theory for some is that this may in some way increase consumer search costs and their statement says you know there's a dissonance that occurs in the consumer mind if you have these other kinds of uses of the trademark term that may blur the stimulant effect of the mark and judge posner in the thai incorporated case says you know kind of posits this hypothetical suppose you have an upscale restaurant that c

Thanks GuidazziO your participation is very much appreciated
- Rusty Grierson

About the author

Rusty Grierson

I've studied traffic psychology at Emory University in Atlanta and I am an expert in microwave astronomy. I usually feel hyper. My previous job was farm equipment mechanic I held this position for 18 years, I love talking about pen spinning and volunteering. Huge fan of Madison Beer I practice waterskiing and collect records.