Enriching Life Through Innovative Ideas SM

TRADEMARK DILUTION

dilution-300x180.jpg

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.

FindLaw Network

What Our Clients Say

Starting a new business can be a bit scary. Aside from worries of failure, there’s also the hassle of making sure all legal paperwork are properly filed. I reached out to Mr. Wang (Tommy) because of his excellent reviews and reputation and I am so glad I did. He was thorough and meticulous in answering all of my concerns and took time to find out special laws and policies regarding the kind of business I am starting. I could focus on the daily practical side of starting my new office without worry because I felt Tommy was reliable and took my case seriously. My business is opened and it’s all been a smooth start because of Tommy’s help. I have plans to start another business venture in the next few years and I already know I’ll be coming back to Wang IP Law.

The Shindig W.

I came to Tommy for help reviewing a licensing agreement I had secured with a well-known manufacturer. Tommy made sure I understood all the details in the contract and he negotiated with the company to improve my side of the deal. I mentioned to Tommy at my first consultation that we were looking to expand throughout the US and were investing a lot of money to make a big entrance into the market. I did not think I would have my store open so soon but Tommy also has connections with the local area and realtors to help me secure the location for my first store in the Los Angeles area. Tommy works a lot with the local businesses and he understands how to transition from the Asian market to US market. Within 8 months my store was open for business and fully operating. I must recommend Tommy to any business owners looking for help with contracts and improving their side of the deal. Tommy has the knowledge and experience to make sure there is a smooth process to open for business here, and make sure that your company is set up for success.

LI H.

I think Tommy and his team by far considered the best people to work with in my 16 business years. Beside quick responses to all my inquiries, they also done things right and providing very professional solutions. I’m highly recommending Tommy and his firm to all business owners.

Calvin C.

I have been working on my Utility Patent for almost 4 years. I have hired and fired two very reputable IP firms because with all their expertise and reputation for being some of the top firms in IP Law, I felt a lack of connection and care in my product, time and financial investment. Then I found Tommy and his team. Tommy does not waste time. He and his team are professional and extremely thorough. After 4 years, I finally found a legal team that I felt spent the time to really understand the components of my utility patent. Tommy also very mindful of cost and how and where my money would be better spent. I really feel I am in great hands with Tommy and his team. They have been patient with my revisions. And most importantly, they made me feel that they fully understood the importance this patent is to me. It has been a great and comforting pleasure working with Tommy.

G.L.

Read All