The Federal Trademark Dilution Act (FTDA) is a federal law that provides protections to famous trademarks from unauthorized uses that dilute their distinctive quality. The FTDA provides owners of trademarks and trade names with the right to file lawsuits to protect their famous marks and names from uses that are not authorized.
The FTDA provides the ability to file a lawsuit to prevent dilution, both likely and actual. The protections provided under the FTDA were important because they prevented the exploitation of the renown and goodwill of famous trademarks.
In addition, the FTDA sought to implement a uniform and consistent way to protect famous trademarks from dilution across the country.
What Are the Practical Implications for Trademark Owners of the FTDA?
There are some practical implications of the FTDA for trademark owners that provide important protections and actions they can take against trademark dilution. The FTDA provides protections for famous trademarks from uses that dilute their distinctiveness.
This applies even when there is not a likelihood of competition or confusion. It is important to note, however, that only trademarks that are considered famous are protected from trademark dilution under the FTDA.
Protections under the FTDA can help maintain brand integrity by ensuring that the trademark is not diluted. An owner of a famous trademark can seek an injunction against another party that is using the trademark or trade name in commerce that is likely to cause dilution of the famous trademark.
The trademark owner is not required to show that confusion has actually occurred or that they have suffered economic loss or injury. An injunction is a court order that would direct the infringing party to stop the conduct that is diluting the protected trademark or trade name.
There are certain limitations to the protections provided under the FTDA. For example, the owner of the trademark is limited to injunctive relief unless the offending party wilfully intended to cause dilution of the mark or to trade on the owner’s reputation.
If this intent can be proven, the trademark owner may be able to seek additional remedies. The FTDA also provide that there are certain types of conduct that will not be actionable, including:
- The fair use of the famous trademark in promotion identifying competing goods or services or comparative commercial advertising
- Noncommercial use of the trademark
- All types of news commentary and news reporting
How Can LegalMatch Help?
An intellectual property attorney can help with all aspects of trademark registration, use, and protection. An attorney can help an entity choose their trademark, ensure that the trademark is not already in use, and make sure it is protected under trademark laws.
If an entity is already using a trademark, a lawyer can help ensure that dilution of that trademark is not occurring. If it is occurring, an attorney can take the necessary steps under the applicable laws to stop the diluting conduct.
As trademark laws, including the FTDA, can be complex and nuanced, it is important to have assistance from a lawyer to ensure the protection of any famous trademark. LegalMatch provides attorney matching services with a large database of licensed and prescreened lawyers at no cost.
LegalMatch has helped millions of people with their legal needs, including protecting their trademarks. See the many LegalMatch customer testimonials for information from satisfied clients.
What Is Trademark Dilution?
Trademark dilution is the use of a trademark in commerce that is so similar to a famous trademark that it confuses consumers’ perception of the famous trademark. For example, if a sportswear company uses a certain type of checkmark as a logo on athletic wear and shoes, it may dilute the distinctive trademark of Nike.
There are two main categories of trademark dilution, including:
- Blurring: Blurring occurs when the distinctiveness of a famous trademark is harmed or reduced by an association with another similar trademark or trade name.
- Tarnishment: Tarnishment occurs when the reputation associated with a famous trademark is tarnished, or harmed, through the association with another similar trademark or trade name.
It is important to note that there are differences between trademark dilution and trademark infringement. Dilution is intended to protect famous trademarks while infringement focuses on the likelihood of consumer confusion.
What Are Some Key Provisions of the FTDA?
The FTDA only provides protections for famous trademarks. Under the FTDA, whether a trademark is considered to be famous will depend on several factors, including:
- Whether the trademark was federally registered
- The duration and extent of the use of the trademark
- The duration and extent of the advertising for the trademark
- The geographic location where the trademark has been used
- The use of the trademark by a third party or parties
- The degree of distinctiveness of the trademark
- This may be through the nature of the trademark itself or through it acquired distinctiveness
- The method by which the product was distributed and marketed, or the channels of trade
- The degree of recognition of the trademark
Under the FTDA, the scope of protection is only for an owner of a prominent and renowned trademark of significant fame. It is important to note that the famous trademark does not have to be federally registered in order to qualify for protections under this act.
What Is the Trademark Dilution Revision Act?
The Trademark Dilution Revision Act (TDRA) was enacted in 2006 as a response to the United States Supreme Court’s decision in the case of Moseley v. V Secret Catalogue, Inc. The TDRA largely replaced the FTDA.
The TDRA established a standard for liability based on the likelihood for dilution. In addition, it defines a famous trademark as one that is widely recognized by the general public as the source of the trademark owner’s services or goods.
It does limit protections from trademark dilution to trademarks that are recognized by the general public instead of those that are recognized by a niche market.
How Is the FTDA Enforced?
Although a trademark does not have to be federally registered to qualify for FTDA protections, it can strengthen the argument for providing protection. The United States Patent and Trademark Office (USPTO) is the federal agency that administers the registration of trademarks.
In the majority of situations, the only remedy that is available under the FTDA is an injunction against additional dilution. If, however, the plaintiff can demonstrate that the defendant willfully intended to “trade on the owner’s reputation or to cause dilution of the mark,” they may be able to recover attorneys’ fees, monetary damages, and even treble damages.
In order for a plaintiff to succeed in a federal trademark dilution claim, they must establish several elements, including:
- The trademark is famous and distinctive
- The defendant’s use of the trademark is considered to be commercial
- The defendant’s use of the trademark began after plaintiff’s mark became famous
- The defendant’s use of the trademark is likely to cause dilution of the plaintiff’s trademark’s distinctive quality through blurring or tarnishment
There are also other factors that will be considered when determining if a trademark will likely cause dilution, including:
- The degree of similarity between the trademarks
- The extent to which the owner of the famous trademark has used the mark exclusively
- The degree of recognition the famous trademark has
- Whether the user of the trademark intended to create an association with the famous mark
- Any actual association between the trademarks
What Are Some Trademark Dilution Cases and Precedents?
There are several notable cases and precedents of cases decided under the FTDA, including:
- Moseley v. V Secret Catalogue, Inc.
- Jack Daniel’s Properties, Inc. v. VIP Products, LLC
- Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC
In the Moseley case, the U.S. Supreme Court held that, in order to establish dilution under the FTDA, the owner of a famous trademark must show that the use of their trademark by a third party reduced the trademark’s ability to distinguish the goods or services it represents. As noted above, the TDRA was enacted largely in response to this decision.
In the Jack Daniel’s Properties case, VIP Products LLC manufactured a toy for dogs that looked like a bottle of Jack Daniel’s whiskey but had jokes on the toy. The court considered whether the toy manufactured by VIP Products LLC harmed the reputation of the Jack Daniel’s trademark.
This case had an impact on trademark law because it clarified that, even if a product is considered a parody, if it uses another company’s trademark to identify the source of its own goods, it can be considered trademark infringement. This decision provided limitations on the use of parody as a defense to trademark infringement claims.
In the Louis Vuitton Malletier case, the Haute Diggity Dog company manufactured Chewy Vuitton dog toys. In this case, the court held that the toys would not cause consumers to confuse the brands.
This case impacted trademark law by clarifying that the success of the parody will lessen the risk of confusion for consumers. The court held that these products were comments on conspicuous consumption and the parody was further enhanced by the company’s production of similar parodies of famous and expensive brands, such as “Chewnel No. 5” targeting “Chanel No. 5” and “Sniffany & Co.” targeting “Tiffany & Co.
Do I Need Legal Assistance?
If you have any questions or concerns related to your trademark and its protections under the FTDA or TDRA, it is essential to consult with a trademark lawyer who can help ensure your trademark is protected. It is essential to be proactive in protecting your famous trademark, as dilution can be detrimental to your livelihood.
LegalMatch can help you find an attorney for your trademark protection concerns for free. Just submit your trademark protection question on the LegalMatch website and you will get responses from licensed and pre-screened member attorneys in about 24 hours who can help you ensure that your trademark is continually protected and is as successful as it can possibly be.
