Trademark dilution is the use of a mark or name that is similar to a famous mark to lessen the capacity and influence the reputation the mark has on the public. Federal Trademark Dilution Act (FTDA), 15 U.S.C. § 1125(c), enacted in 1996, specifically protects famous marks from unauthorized use. Dilution differs from trademark infringement because trademark infringement involves the chance of consumer confusion. However, dilution can occur even when consumers will not be misled. When a mark similar to another famous mark is used in commercial settings, it may be considered a trademark dilution.
The Two Types of Dilution
There are two main types of dilution, blurring and tarnishment. The traditional trademark dilution is known as blurring. Blurring occurs when the famous mark is altered in a form and used as a different mark. If the similar mark is distinct, but is commonly mistaken for the famous mark, this may be considered blurring. Blurring slowly weakens the distinctiveness and capacity of a famous mark to identify and distinguish goods and services.
Dilution due to tarnishment is when the reputation of the mark is harmed because of the use of another similar mark. A trademark is tarnished when then infringing mark portrays the famous mark in a negative light and damages the reputation of the mark - usually in the context of crimes and drugs. One common example of trademark tarnishment is when an infringing mark is used on lower quality goods.
Louis Vuitton vs. Hyundai Motors
One reputable case on trademark dilution is Louis Vuitton Malletier (LVM) v. Hyundai Motor America. During the 2010 Super Bowl, Hyundai produced a commercial that featured an ordinary basketball with markings similar to the signature markings found on Louis Vuitton bags. In the commercial, the marked basketball was used to show that luxury is not necessarily defined to an upper caste. Louis Vuitton argues that Hyundai violated the trademark dilution law, and asked Hyundai to stop further dilution of their trademark. They claimed that the use of a similar logo in Hyundai's commercial diluted the distinctiveness and tarnished the reputation of LVM marks.
Protection Against Trademark Dilution
Only certain marks are protected against dilution. Dilution is a trademark infringement that exclusively applies to famous marks. Dilution does not apply to marks that are not well known because there is a smaller chance of confusion between non-famous marks. While determining what constitutes as a famous mark, courts may take into consideration the time the mark as been in use.
The mark in question must have a certain degree of recognition in order to establish a claim of dilution. It must be instantly recognized by a majority of consumer. The geographic location of where the mark is generally distributed as well as where it is used is important. One example of a clearly famous mark with a massive degree of recognition is Coca-Cola. The duration and extent of use of the mark is enough for courts to recognize it as famous, therefore Coca-Cola would be protected against trademark dilution.
A more difficult mark to protect would be Apple. Although Apple has been used in correlation with well-known products, the name has been used by other business as well. Apple is not protected under trademark dilution due to the fact that Apple is a commonly used word that is often diluted.
The federal dilution law is for the protection of famous trademarks and not consumers who were misled by an infringing mark. Diluting trademark can harm the market value of a famous mark and can result in great financial losses for a company. However, trademark dilution is difficult to prove because it requires irrefutable proof that the similar mark lowered public opinion of the famous mark.