Trademark dilution
Encyclopedia
Trademark dilution is a trademark
law concept giving the owner of a famous trademark standing
to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of another's trademark on products that do not compete with, and have little connection with, those of the trademark owner. For example, a famous trademark used by one company to refer to hair care products might be diluted if another company began using a similar mark to refer to breakfast cereal
s or spark plug
s.. Dilution is a basis of trademark infringement that only applies to famous marks. With non-famous marks, the owner of the mark must show that the allegedly infringing use creates a likelihood of confusion as to the source of the product or service being identified by the allegedly infringing use. With non-famous marks, it is highly unlikely a likelihood of confusion will be found if the products or services are in unrelated markets. However, with famous marks, any use by another person of the mark has the potential for confusion since a famous mark is so well-known among the consuming public that people will assume affiliation with the owner of the mark regardless of the product or service being sold under the infringing use.
. Consequently, trademark law traditionally concerned itself with situations where an unauthorized party sold goods that are directly competitive with or at least related to those sold by the trademark owner. A trademark is diluted when the use of similar or identical trademarks in other non-competing markets means that the trademark in and of itself will lose its capacity to signify a single source. In other words, unlike ordinary trademark law, dilution protection extends to trademark uses that do not confuse consumers regarding who has made a product. Instead, dilution protection law aims to protect sufficiently strong trademarks from losing their singular association in the public mind with a particular product, perhaps imagined if the trademark were to be encountered independently of any product (e.g., just the word Pepsi spoken, or on a billboard
).
, Kleenex
, Kool-Aid
, or Sony
, and unique terms that were invented (such as Exxon
) rather than surnames (such as Ford
or Zamboni
) or ordinary words in language. Some jurisdiction
s require additional registration of these trademarks as defensive marks in order to qualify for dilution protection.
Another way of describing the necessary strength of a trademark may establish some basis for dilution protection from a consumer-confusion standpoint. Truly famous trademarks are likely to be seen in many different contexts due to branching out or simple sponsorship, to the extent that there may be very few markets, if any, that a consumer would be surprised to see that famous trademark involved in. A prime example may be the past involvement of Coca-Cola in clothing lines.
). For example, in the 1998 case of Panavision International v. Toeppen, defendant Toeppen registered the domain name www.panavision.com, and posted aerial views of the city of Pana, Illinois
on the site. The Ninth Circuit Court of Appeals
found that trademark dilution occurred when potential customers of Panavision could not find its web site at panavision.com, and instead were forced to search through other (less obvious) domain names. The fact that potential customers might be discouraged from locating Panavision's legitimate website, coupled with evidence that Toeppen was in the business of registering domain names for profit, led the court to find that Toeppen's conduct "diminished the capacity of the Panavision marks to identify and distinguish Panavision's goods and services on the Internet", and thus constituted dilution.
Lately, the Trademark Dilution Revision Act
of 2006, or H.R. 683, was signed into law. H.R. 683 overturned the Supreme Court decision in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003). Moseley held the plaintiff needed to prove actual dilution under the Federal Trademark Dilution Act ("FTDA"). The new law revises the FTDA so that the plaintiff only needs to show the defendant's mark is likely to cause dilution. However, the revision also reduced the universe of marks falling under its protection, requiring that marks be nationally well known to qualify for protection from dilution.
For example, when Wolfe's Borough Coffee, Inc., a New Hampshire-based coffee company, sold its coffee under the trademarks that included the words “Charbucks Blend” and "Mr. Charbucks," Starbucks Corporation sued, claiming that the use of the word “Charbucks” diluted the “Starbucks” mark by both blurring and tarnishment. The Second Circuit Court of Appeals decided that marks need not be “substantially similar” under the FTDA for dilution to occur when other factors supporting a finding of dilution, such as the distinctiveness of the famous mark and the degree of its recognition, were present. In its decision, the court found that these other factors may be sufficient to support a dilution claim and remanded the case to the district court in order to determine whether dilution had in fact occurred.
Trademark
A trademark, trade mark, or trade-mark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or...
law concept giving the owner of a famous trademark standing
Standing (law)
In law, standing or locus standi is the term for the ability of a party to demonstrate to the court sufficient connection to and harm from the law or action challenged to support that party's participation in the case...
to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of another's trademark on products that do not compete with, and have little connection with, those of the trademark owner. For example, a famous trademark used by one company to refer to hair care products might be diluted if another company began using a similar mark to refer to breakfast cereal
Breakfast cereal
A breakfast cereal is a food made from processed grains that is often, but not always, eaten with the first meal of the day. It is often eaten cold, usually mixed with milk , water, or yogurt, and sometimes fruit but sometimes eaten dry. Some cereals, such as oatmeal, may be served hot as porridge...
s or spark plug
Spark plug
A spark plug is an electrical device that fits into the cylinder head of some internal combustion engines and ignites compressed fuels such as aerosol, gasoline, ethanol, and liquefied petroleum gas by means of an electric spark.Spark plugs have an insulated central electrode which is connected by...
s.. Dilution is a basis of trademark infringement that only applies to famous marks. With non-famous marks, the owner of the mark must show that the allegedly infringing use creates a likelihood of confusion as to the source of the product or service being identified by the allegedly infringing use. With non-famous marks, it is highly unlikely a likelihood of confusion will be found if the products or services are in unrelated markets. However, with famous marks, any use by another person of the mark has the potential for confusion since a famous mark is so well-known among the consuming public that people will assume affiliation with the owner of the mark regardless of the product or service being sold under the infringing use.
Background
Trademark law is generally focused on the need for consumer protectionConsumer protection
Consumer protection laws designed to ensure fair trade competition and the free flow of truthful information in the marketplace. The laws are designed to prevent businesses that engage in fraud or specified unfair practices from gaining an advantage over competitors and may provide additional...
. Consequently, trademark law traditionally concerned itself with situations where an unauthorized party sold goods that are directly competitive with or at least related to those sold by the trademark owner. A trademark is diluted when the use of similar or identical trademarks in other non-competing markets means that the trademark in and of itself will lose its capacity to signify a single source. In other words, unlike ordinary trademark law, dilution protection extends to trademark uses that do not confuse consumers regarding who has made a product. Instead, dilution protection law aims to protect sufficiently strong trademarks from losing their singular association in the public mind with a particular product, perhaps imagined if the trademark were to be encountered independently of any product (e.g., just the word Pepsi spoken, or on a billboard
Billboard (advertising)
A billboard is a large outdoor advertising structure , typically found in high traffic areas such as alongside busy roads. Billboards present large advertisements to passing pedestrians and drivers...
).
Requirements for protection
The strength required for a trademark to deserve dilution protection differs among jurisdictions, though it generally includes the requirement that it must be distinctive, famous, or even unique. Such trademarks would include instantly recognizable brand names, such as Coca-ColaCoca-Cola
Coca-Cola is a carbonated soft drink sold in stores, restaurants, and vending machines in more than 200 countries. It is produced by The Coca-Cola Company of Atlanta, Georgia, and is often referred to simply as Coke...
, Kleenex
Kleenex
Kleenex is a brand name for a variety of toiletry paper-based products such as facial tissue, bathroom tissue, paper towels, and diapers. The name Kleenex is a registered trademark of Kimberly-Clark Worldwide, Inc. Often used as a genericized trademark, especially in the United States, "Kleenex"...
, Kool-Aid
Kool-Aid
Kool-Aid is a brand of flavored drink mix owned by the Kraft Foods Company.-History:Kool-Aid was invented by Edwin Perkins in Hastings, Nebraska, United States. All of his experiments took place in his mother's kitchen. Its predecessor was a liquid concentrate called Fruit Smack...
, or Sony
Sony
, commonly referred to as Sony, is a Japanese multinational conglomerate corporation headquartered in Minato, Tokyo, Japan and the world's fifth largest media conglomerate measured by revenues....
, and unique terms that were invented (such as Exxon
ExxonMobil
Exxon Mobil Corporation or ExxonMobil, is an American multinational oil and gas corporation. It is a direct descendant of John D. Rockefeller's Standard Oil company, and was formed on November 30, 1999, by the merger of Exxon and Mobil. Its headquarters are in Irving, Texas...
) rather than surnames (such as Ford
Ford Motor Company
Ford Motor Company is an American multinational automaker based in Dearborn, Michigan, a suburb of Detroit. The automaker was founded by Henry Ford and incorporated on June 16, 1903. In addition to the Ford and Lincoln brands, Ford also owns a small stake in Mazda in Japan and Aston Martin in the UK...
or Zamboni
Frank Zamboni
Frank Joseph Zamboni, Jr. was a U.S. inventor whose most famous invention is the modern ice resurfacer, with his surname becoming a generic colloquialism and trademark for these resurfacers.-Biography:...
) or ordinary words in language. Some jurisdiction
Jurisdiction
Jurisdiction is the practical authority granted to a formally constituted legal body or to a political leader to deal with and make pronouncements on legal matters and, by implication, to administer justice within a defined area of responsibility...
s require additional registration of these trademarks as defensive marks in order to qualify for dilution protection.
Another way of describing the necessary strength of a trademark may establish some basis for dilution protection from a consumer-confusion standpoint. Truly famous trademarks are likely to be seen in many different contexts due to branching out or simple sponsorship, to the extent that there may be very few markets, if any, that a consumer would be surprised to see that famous trademark involved in. A prime example may be the past involvement of Coca-Cola in clothing lines.
Blurring and tarnishment
Dilution is sometimes divided into two related concepts: blurring, or essentially basic dilution, which "blurs" a mark from association with only one product to signify other products in other markets (such as "Kodak shoes"); and tarnishment, which is the weakening of a mark through unsavory or unflattering associations. Not all dilution protection laws recognize tarnishment as an included concept.Trademark dilution in the United States
Prior to specifically targeted laws being adopted, dilution protection was used in some U.S. jurisdictions to attack domain name infringement of trademarks (see CybersquattingCybersquatting
Cybersquatting , according to the United States federal law known as the Anticybersquatting Consumer Protection Act, is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else...
). For example, in the 1998 case of Panavision International v. Toeppen, defendant Toeppen registered the domain name www.panavision.com, and posted aerial views of the city of Pana, Illinois
Pana, Illinois
Pana is a city in Christian County, Illinois, United States. The population was 5,847 at the 2010 census.-Geography:Pana is located at .According to the United States Census Bureau, the city has a total area of , all of it land....
on the site. The Ninth Circuit Court of Appeals
United States Court of Appeals for the Ninth Circuit
The United States Court of Appeals for the Ninth Circuit is a U.S. federal court with appellate jurisdiction over the district courts in the following districts:* District of Alaska* District of Arizona...
found that trademark dilution occurred when potential customers of Panavision could not find its web site at panavision.com, and instead were forced to search through other (less obvious) domain names. The fact that potential customers might be discouraged from locating Panavision's legitimate website, coupled with evidence that Toeppen was in the business of registering domain names for profit, led the court to find that Toeppen's conduct "diminished the capacity of the Panavision marks to identify and distinguish Panavision's goods and services on the Internet", and thus constituted dilution.
Lately, the Trademark Dilution Revision Act
Trademark Dilution Revision Act
The Trademark Dilution Revision Act of 2006 was a law passed in the United States covering trademark law, and specifically dealt with trademark dilution....
of 2006, or H.R. 683, was signed into law. H.R. 683 overturned the Supreme Court decision in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003). Moseley held the plaintiff needed to prove actual dilution under the Federal Trademark Dilution Act ("FTDA"). The new law revises the FTDA so that the plaintiff only needs to show the defendant's mark is likely to cause dilution. However, the revision also reduced the universe of marks falling under its protection, requiring that marks be nationally well known to qualify for protection from dilution.
For example, when Wolfe's Borough Coffee, Inc., a New Hampshire-based coffee company, sold its coffee under the trademarks that included the words “Charbucks Blend” and "Mr. Charbucks," Starbucks Corporation sued, claiming that the use of the word “Charbucks” diluted the “Starbucks” mark by both blurring and tarnishment. The Second Circuit Court of Appeals decided that marks need not be “substantially similar” under the FTDA for dilution to occur when other factors supporting a finding of dilution, such as the distinctiveness of the famous mark and the degree of its recognition, were present. In its decision, the court found that these other factors may be sufficient to support a dilution claim and remanded the case to the district court in order to determine whether dilution had in fact occurred.
Further reading
- Ilanah Simon, The Actual Dilution Requirement in the United States, United Kingdom and European Union: A Comparative Analysis, Journal of Science & Technology Law, Volume 12 Issue 2 - Summer 2006
External links
- Trademark Act of 1946 (aka Title 15, Chapter 22, of the United States Code) also here Registration of trademarks is Sec. 1051, and the prohibition of dilution is in Sec. 1125
- Text of the Trademark Dilution Revision Act of 2006 from GPO