HOW DO YOU DILUTE A TRADEMARK?

By Rene Dial

The concept of trademark dilution was born in a Harvard Law Review article by Frank Schechter 1927.  Schecter believed that there were marks, famous marks, that should be protected without competition between the marks for fear that a truly famous mark would be diluted and lose meaning.  Since then many states have passed trademark dilution laws.  Congress’ second attempt at protecting famous marks is the Federal Trademark Dilution Act that passed in 2006.  Some of the marks that Schechter believed should be protected are Aunt Jemima, Kodak, and Mazda.

Dilution under the FTDA is the “lessening of the capacity of a famous mark to identify and distinguish goods and services.”  USC 1125 § 2 (B) and (C).  This lessening effect happens when a confusingly similar mark outside the senior uses classification of goods and services diminishes the senior user’s ability to identify his product or service having a dilutive effect.  The Trademark Dilution Revision Act of 2006 distinguishes between two types of dilution, dilution by blurring and dilution by tarnishment.

Dilution by blurring occurs when (B) (1), “‘dilution by blurring’ is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.”

Dilution by tarnishment is defined as an (C) (1), “‘… association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.”

Next week I will address the subject of blurring a little more in depth.