One of the main types of trademark dilution includes trademark blurring. Trademark blurring occurs when the distinctiveness of a famous trademark is harmed or reduced by association with another similar trade name or trademark.
An individual establishes their rights to a trademark when they make use of that trademark. It is important to be aware that these rights are limited.
In addition, these rights will only be good in the geographic area where the owner sells the products, whether those are goods or services. When an individual desires stronger nationwide as well as possible international rights associated with their trademark, they need to apply for trademark registration with the U.S. Patent and Trademark Office (USPTO).
The law generally does not require trademark registration. However, registration does provide the trademark owner with broader rights and more effective ways to protect their trademark.
This is important if trademark dilution occurs. Dilution occurs when a trademark or trade name used in commerce is so similar to a famous trademark that it confuses the public’s perception of the famous trademark.
What Is the Impact of Trademark Blurring on Businesses?
As shown with the Thermos example above, trademark blurring can have a major impact on a business, even causing it to lose its trademark rights. One of the most effective ways to prevent this is for the business to stay informed about the use of their trademark by other parties as well as prevent any misuse by competitors.
This can be done by monitoring trademark registration applications and opposing any registrations of the same or similar trademarks. A trademark lawyer can help a business keep up with this seemingly overwhelming task.
If trademark blurring does occur, the owner of a famous mark may be able to seek an injunction against the party that is using a mark likely to cause dilution. An injunction is a court order requiring the other party to take action in connection to remedy the issue.
The factors that will be used to determine whether a trademark is famous include:
- The extent, length of time, and geographic reach of advertising and publicity of the trademark
- The geographic extent and volume of sales of services or goods that are offered under the trademark
- The extent of actual recognition of the trademark
In order for a trademark owner to succeed, they must show that the trademark established its fame prior to the use of the allegedly diluting mark.
How Can a Lawyer Help?
A trademark lawyer can help at any phase of the trademark process, from application, to receiving the trademark, to protecting its use. It is very important to have a lawyer involved, as once trademark rights are lost, they cannot be regained.
Trademark issues can be quite complex and may also involve various types of legal concepts. A qualified trademark lawyer can help by:
- Reviewing your trademark and overall intellectual property assets
- Researching the relevant trademark laws that apply to your claim
- Filing any claims with the appropriate legal bodies as needed
- Answering your questions and providing the guidance you need during the legal process
If you are unsure of any of your trademark rights, or have questions about your claim, contact a lawyer in your area.
How Did the Concept of Trademark Blurring Arise?
Trademark blurring as a legal concept originated in 1927. This occurred when Frank Isaac Schechter, the author of Historical Foundations of Law Pertaining to Trademarks, introduced the idea of trademark blurring in a Harvard Law Review article, “The Rational Basis of Trademark Protection.” Schechter argued that trademark protections should prevent individuals from “destroying the originality and uniqueness of the mark.”
There are many states in the United States that have their own anti-dilution statute because of the previous lack of specific federal laws governing the issue. In 1995, the Federal Trademark Dilution Act (FTDA) was passed.
This act amended the Trademark Act of 1946, providing more protections to owners of famous marks. The FTDA provides trademark owners with the opportunity to seek injunctions and monetary damages against other parties who use their famous trademark in a way that dilutes its distinctive quality. It also provides for damages, including the profits the defendant earned as well as requiring the defendant to pay the plaintiff’s costs and attorneys’ fees.
In 2006, Congress passed the Trademark Dilution Revision Act (TDRA). This act amended the Lanham Act, which is the primary federal law that currently governs trademarks. It also largely replaced the FTDA.
As discussed above, blurring occurs when the distinctiveness of a famous trademark is compromised because of the existence of a similar mark, even if those services or goods are not in direct competition. For example, if a technology company used a logo similar to a famous coffee brand, it may blur the unique identity of the coffee brand.
One example of a trademark case that led to a brand losing its trademark rights was the King-Seeley Thermos Co. v. Aladdin Industries case in 1963. Thermos was originally a brand name that was registered by a German company in the early 20th century to market its vacuum flask, which kept beverages cold or hot for extended periods of time.
The product became so popular that the term Thermos became a general term used by the public to refer to any type of vacuum flask, no matter what company manufactured it. This created a challenger to the Thermos brand’s trademark status.
In this case, the court determined that the Thermos name had become generic due to its common usage by competitors and consumers. This means that the company’s exclusive trademark rights were lost and other companies could also use the term to describe their own vacuum flasks.
The Thermos case highlights the importance of actively managing and protecting existing trademarks. It also shows there can be risks when a name becomes a generic term for all similar products.
This shows that there is a delicate balance that must be maintained between maintenance of trademarks rights and widespread brand recognition. This is also an example of one of the common scenarios that may lead to trademark blurring.
Another common example is when a famous trademark is affixed on a completely different and less famous product. One common example of this is the Starbucks logo that commonly appears related to many different products and services.
What Is the Legal Framework Surrounding Trademark Blurring?
The Trademark Dilution Revision Act (TDRA) of 2006 strengthened the federal protections for famous trademarks. Even under this law, however, federal dilution claims may not be available to all trademark owners, as the trademark must be considered famous.
Pursuant to the TDRA, a trademark will be considered famous if it is “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.”
There are several elements that plaintiffs must show in court to prove a trademark infringement claim. When making this determination, courts often use a multi-factor test that examines several aspects of the mark and the goods or services it represents.
The specific factors that are examined may vary by jurisdiction. However, the following is a general overview of how a court will approach a trademark blurring claim.
Similarity of the marks
The court will review the phonetic, visual, and conceptual similarities between the two marks. This includes their overall appearance, color scheme, style, and font. Even when marks are not identical, if they are close enough in appearance to create confusion among consumers, it can be considered infringement.
Relatedness of the goods or services
The court will also review whether or not the services or goods that are associated with the trademarks are similar or related in nature. If they are closely related, consumers are more likely to presume that they come from the same source.
Strength of the plaintiff’s mark
The strength of a trademark refers to the level of recognition that it has among consumers as well as its distinctiveness. Strong and well-known marks are more likely to be protected against similar marks because consumers are more likely to be confused by their resemblance.
Evidence of actual confusion
The court may consider whether there have been occurrences of actual confusion among consumers that resulted from the similarity of the marks. This can be shown using consumer complaints, surveys, or testimonies from consumers who have actually experienced confusion.
Intent of the defendant
If a defendant chose intentionally to use a mark that was similar to the plaintiff’s to capitalize on their reputation or goodwill, a court will be more likely to find that infringement occurred.
Depending on the facts of each unique case, a trademark lawyer can provide an individual with a professional opinion about the strength and validity of a trademark owner’s claims. A lawyer can also help clarify the difference between blurring a tarnishment.
Trademark tarnishment arises when the reputation that is associated with a famous trademark is tarnished, or harmed, because it is associated with another similar trademark or trade name.
Contact a Trademark Lawyer in Your Area for Assistance
If you suspect that your trademark may be diluted or that another party has infringed on your rights as the owner, you should consult with a trademark lawyer as soon as you can. LegalMatch is an excellent resource for finding a trademark attorney in your area who can provide you with valuable advice.
If blurring of your trademark has already begun, your lawyer can help you put an end to it, whether they only have to send a cease-and-desist letter to the responsible party or request a court order halting the diluting or infringing conduct. The success of your business, product, or service may depend on protecting your trademark, so it is essential to have a lawyer to ensure its success.
