A trademark is a design, expression, or sign, such as a name or logo, that distinguishes goods or services from other goods and services. This is a tool that both individuals and businesses may use to protect their brand identity in the market.
Trademark dilution is the use of a trademark or trade name that is so similar to a famous trademark, it confuses consumers’ perception of the famous trademark. For example, if a sportswear company uses a type of checkmark and a logo on its athletic wear and sports shoes, it may dilute the distinctive trademarks of the famous trademark, Nike.
Another way dilution may occur is if a company puts a check mark on a different type of product. This could confuse consumers by making them wonder if Nike had started a new line of their products.
It is important for individuals and businesses to have an understanding of trademark dilution for many reasons. As an owner of a famous trademark, understanding this concept will help ensure that their trademark is protected.
As an owner of a new trademark, having an understanding of this concept can help the trademark owner ensure that they do not face liability for trademark dilution. It can also help ensure they create a trademark that is not already in use or too similar to one that is.
How Can I Prevent Trademark Dilution?
One of the most effective ways to prevent loss of trademark rights through dilution is for the trademark owner to be informed of the use of the trademark by other parties and to prevent any misuse of the trademark by competitors. For example, trademark owners can monitor trademark registration applications and oppose any applications seeking registration of the same or similar trademarks.
Another important way a trademark owner can prevent dilution is to have a trademark lawyer helping with their trademark issues. Their attorney can conduct searches and stay aware of current applications that may potentially dilute their trademark.
When an individual or business owns a trademark, they must be willing to stop other parties from committing infringement. In certain situations, a party may use a trademark without the owner’s permission and the owner may not take any action to prevent this from happening.
When this occurs, a court may infer that the trademark owner does not actually own the rights to their trademark or that they do not want to enforce their trademark rights any longer. A trademark owner may engage in trademark litigation to protect their exclusive rights to use their trademark.
Similar to other types of lawsuits, if the owner does not file their trademark infringement case within the time period that is outlined in the applicable statute of limitations, they can lose the right to sue for that instance of trademark infringement.
It is important for a trademark owner to ensure that their trademark rights continue and are protected by stopping other parties from engaging in conduct that infringes upon their rights. By taking steps to stop other parties from infringing on trademark rights, the owner demonstrates to the court that they are, in fact, the rightful owner of the trademark rights and they continue to have an interest in preserving their rights.
How Can LegalMatch Help?
Intellectual property attorneys can help parties with every aspect of trademarks, including their registration, use, and protecting them. A lawyer can even help choose a trademark, make sure that it is not already being used, and ensure its continued protection under trademark laws.
When a party is already using a trademark, their lawyer can help make sure that dilution of that trademark does not occur. If dilution is occurring, a lawyer can take the appropriate steps under the applicable laws to stop the party’s diluting conduct.
Trademark laws may be voluminous, complex, and nuanced, so it is very important to have legal representation for any trademark issues and to ensure a famous trademark is protected. A great place to find a trademark lawyer is LegalMatch because it provides a no cost way to find lawyers in your area who are licensed and pre-screened.
LegalMatch has helped millions of clients, including helping with trademarks. There are many LegalMatch customer testimonials from satisfied clients.
What Else Should I Know about Trademark Dilution?
Trademark dilution, as noted above, occurs when a trademark is used in commerce that confuses or diminishes consumers’ perception of the famous trademark. This may occur if a similar or identical trademark impairs the distinctiveness of the famous trademark
It can also occur when the association with the famous trademark harms the reputation of that famous trademark. This concept provides protections from trademarks that are so well-known, famous, or reputable that it is determined that they deserve protection whether or not their unauthorized use is likely to cause consumer confusion.
It is important for trademark owners to know that there are differences between trademark dilution and trademark infringement. Trademark dilution is a concept that only applies to famous trademarks.
Trademark infringement is a concept that focuses on the likelihood of consumer confusion.
What Are the Types of Trademark Dilution?
There are two main categories of trademark dilution, including:
Trademark dilution by blurring occurs when the distinctiveness of a famous trademark is harmed or reduced by an association with another similar trademark. This can happen even when there is no direct competition between the two products or services. One example of this would be if a washer and dryer company put an apple logo on their machines, making consumers wonder if Apple began producing these appliances.
Tarnishment occurs when the reputation that is associated with a famous trademark is tarnished, or harmed, through association with another trademark that is similar. This commonly occurs when the famous trademark is associated with something that is offensive, negative, or inferior, even when there is no direct confusion between the two goods or services. One example of this may be using the name “Nike” on a product of inferior quality.
How Are Trademarks Legally Protected?
Trademarks are protected from dilution under the Federal Trademark Dilution Act (FTDA). The FTDA is a federal law that protects famous trademarks from unauthorized uses that dilute their distinctive quality.
The FTDA provides owners of famous trademarks with the right to file lawsuits to protect their famous trademarks from uses that are not authorized. The FTDA provides owners with the ability to file lawsuits to prevent dilution, likely and actual.
These protections apply even if there is not a likelihood of confusion or competition. The provisions of the FTDA can help maintain a business’ brand integrity by ensuring that the trademark is not diluted.
Owners of famous trademarks may also seek injunctions against a party that is using a trademark in commerce that is likely to cause dilution of the famous trademark. The owner of the trademark does not have to show that confusion actually occurred or that they have suffered economic loss or injury.
There are, however, limitations to the protections that are provided by the FTDA. For example, trademark owners are limited to injunctive relief unless the offending party willfully intended to trade on the trademark owner’s reputation or to cause dilution of the trademark.
There are also certain types of conduct that are not actionable, including:
- The fair use of the famous trademark in promotion identifying competing goods or services or comparative commercial advertising
- All types of news commentary and news reporting
- Noncommercial use of the trademark
It is important to note that the famous trademark is not required to be federally registered to qualify for protection under the FTDA. Additionally, for a trademark dilution lawsuit to be successful, the trademark must have been famous before the use of the allegedly diluting trademark began.
The Trademark Dilution Revision Act (TDRA) is another law that protects trademarks and largely replaced the FTDA. It was enacted as a response to the United States Supreme Court’s decision in the case of Moseley v. V Secret Catalogue, Inc.
The TDRA provides a standard for liability based on the likelihood for dilution. It also defines a famous trademark as a trademark that is widely recognized by the general public as the source of the trademark owner’s goods or services.
How Do I Prove Trademark Dilution?
Because the FTDA only provides protections for famous trademarks, the court will make a determination of whether a trademark is considered famous using several factors, such as:
- Whether the trademark was federally registered
- The geographic location where the trademark has been used
- The use of the trademark by a third party or parties
- The degree of recognition of the trademark
- The duration and extent of the use of the trademark
- The duration and extent of the advertising for the trademark
- 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 court will also examine certain factors to determine whether a trademark is likely to cause dilution by blurring, including:
- The degree of similarity between the trademark and the famous trademark
- The degree of the famous trademark’s inherent or acquired distinctiveness
- The extent to which the owner of the famous trademark is engaged in substantially exclusive use of the trademark
- The degree of recognition of the famous trademark
- Whether the user of the trademark intended to create an association with the famous trademark
- Any actual association between the trademark and the famous trademark
Do I Need Legal Assistance?
It is important to ensure that your famous trademark does not suffer from dilution. If you have any questions or concerns about your trademark and potential protections under the FTDA and TDRA, it is important to consult with a trademark lawyer who can ensure that your trademark is protected.
It is very important to be proactive in protecting your famous trademark, as dilution can be detrimental to your business and livelihood. LegalMatch can help ensure your trademark is taking advantage of all of the protections it can under the law.
You can use LegalMatch at no charge to find a trademark attorney in your area who is licensed and pre-screened. Simply submit your trademark question or concern on the website and, in around 24 hours, you will receive responses from member lawyers who are ready to help ensure your trademark does not suffer from dilution.
