Trademark Dilution: Blurring v. Tarnishment

 

The Federal Trademark Dilution Act (“FTDA”), embodied in Section 43(c)(1) of the Lanham Act, provides that famous marks are eligible for federal protection when a third party’s use of the mark dilutes the famous mark’s distinctiveness, even in the absence of competition, likelihood of confusion, mistake, or deception. Protection against dilution does not exist to protect the public but rather exists to protect the owner of a trademark.

It is important to note the distinction between trademark dilution and trademark infringement. Trademark infringement occurs when someone other than the trademark owner uses the mark in a way that is likely to cause consumer confusion. Trademark dilution, on the other hand, occurs when someone other than the trademark owner uses the mark, usually in connection with noncompeting goods, and thereby causes the association between the mark and the good/service to decrease.

A trademark dilution claim requires that the owner’s mark be distinctive and famous. To determine whether a given mark is sufficiently distinctive and famous to be afforded protection, courts consider the following factors:

(1) The degree of the subject mark’s inherent or acquired distinctiveness;

(2) The duration and extent of use of the mark in connection with the goods or services it identifies;

(3) The duration and extent of advertising and publicity;

(4) The geographical extent of the relevant trading area;

(5) The channels of trade;

(6) The degree of the mark’s recognition in the trading areas and channels of trade used by the mark’s owner and the person against whom the injunction is sought;

(7) The nature and extent of third parties’ use of same or similar marks; and

(8) Whether the mark has been registered.

If it is decided that the owner’s mark is distinctive and famous, the next determination to be made is whether the use of the famous mark causes dilution. To make this determination, courts consider the following factors:

(1) the degree of similarity between the mark or trade name and the famous mark;

(2) the degree of inherent or acquired distinctiveness of the famous mark;

(3) the extent to which famous mark is engaging exclusive use of the mark;

(4) the degree of recognition of the famous mark;

(5) whether the user of the mark or trade name intended to create an association with the famous mark; and

(6) any actual association between the mark or trade name and the famous mark.

The FTDA protects against two different types of dilution – dilution by “blurring” and dilution by “tarnishment.” Blurring typically refers to the whittling away of distinctiveness caused by the unauthorized use of a mark on dissimilar products. Blurring occurs when the third party’s use of the trademark decreases the likelihood that the mark will serve as a unique identifier of the owner’s product and hinder the selling power of the owner’s mark. For example, Buick aspirin or DuPont shoes would be forms of blurring.

Tarnishment, on the other hand, hinders the trademark owner’s reputation. Tarnishment involves an unauthorized use of a mark which links it to products that are of poor quality or which are portrayed in an unwholesome or distasteful context that is likely to reflect adversely upon the owner’s product. For example, “Enjoy Cocaine” would be a form of tarnishment.

Typically, the only relief available for trademark dilution is injunctive relief. However, if the defendant “willfully” intended to trade on the owner’s reputation or to cause dilution of the famous mark, the owner of the mark may also be entitled to other remedies, including the defendant’s profits, damages, attorneys’ fees, and destruction of the infringing goods.