WHAT IS TRADEMARK DILUTION?
Both infringement and dilution involve the exploitation of a well-known trademark by an opposing company. The key difference lies in the consumer’s reaction to the use. With infringement, two similar product lines are creating confusion among the public. A fast-food restaurant named ‘The Burger Kings’ could most certainly be accused of trademark infringement by Burger King, despite pluralizing and making their company name a proper title. The similarity in names could create confusion in the marketplace and thereby infringe Burger King’s trademark.
On the other hand, should a shoe company choose to name its line of footwear the Burger Kings, there would likely be no confusion with the restaurant chain and therefore there would be no infringement. However, the overall originality and authority of the trademark would be diminished. If taken to a wide enough scale, Burger King could lose its identity to any number of product lines and ultimately be lost in the crowd.
In recent years, a number of high profile brands such as Starbucks and Victoria’s Secret have brought lawsuits against entities who have piggy-backed their trademarks creating trademark dilution. In each case, the resulting verdict was almost entirely based on the context within which the dilution occurred. This is a key factor and can result in two distinctly different types of dilution which trademark holders must consider – blurring and tarnishment.
Blurring vs. Tarnishment
With the introduction of the Trademark Dilution Revision Act (TDRA), a number of key provisions were put into place to help clarify the original Federal Trademark Dilution Act of 1996. One of the key features is that a trademark owner no longer needs to provide definitive proof that an opposing company was diluting its brand. The threat of it occurring must be perceived or potential. From there, damages could occur in one of two ways – blurring and tarnishment. With blurring, a famous trademark is affixed to an entirely different, and less famous, product. Like the Burger King example before, if placed on a car or pair of pants, the trademark becomes less distinctive and therefore less effective as a brand, despite not qualifying as infringement.
Tarnishment is a variation on the theme, but adds an unsavory factor such that the brand is actually damaged by the otherwise non-infringing use. For example, if a shoe company uses the Burger King trademark on shoes and the shoes are of poor quality, the trademark has been tarnished.
Trademark dilution remains an extremely complex area of trademark law. If you have a trademark issue that relates to dilution, blurring, or tarnishment, please feel free to contact us.