Your company has no doubt expended a good deal of time, energy and resources in developing your trademark. The value of that mark comes from its exclusivity. So what happens when a competitor in your space introduces something similar that, while distinct enough to not qualify as trademark infringement, could certainly cause confusion amongst consumers as to which was truly your brand? Many of the clients that we here at the Wang IP Law Group PC have worked with in the past have come to us facing this same conundrum. Fortunately, we have typically been able to offer good news: There is legal recourse available in such situations.
Trademark dilution refers to the unauthorized use of material similar to famous marks that effects the famous mark by association. According to the Cornell University Law School, factors that go into determining whether your mark is considered famous include the extent of time you have been using it, the geographic market your mark extends to, and the sales volumes it has helped generate. The most common form of trademark dilution is dilution by blurring (impairment due to confusion between similar trademarks). To prove that a competitor is guilty of this, you must prove the following:
- That its mark is actually similar to yours
- The distinctiveness of your own mark
- The extent to which you are engaged in exclusive use of the mark
- How famous your mark truly is
- That your competitor intentionally tried to create an association with your mark
- That consumers did in fact make that association
The other recognized form of trademark dilution is dilution by tarnishment. This occurs when your mark’s reputation suffers due to its association with another. To learn more about remedies for trademark dilution, please continue to explore our site.