Trademark Law and Practice

Dilution

Trademark dilution is making a famous mark weaker.

Trademark dilution can occur "by blurring" or "by tarnishment."

A dilution action only applies to purely commercial speech.

  1. Trademark
  2. Famous mark
  3. Similarity to mark
Dilution by Blurring

Trademark dilution by blurring is when a "famous mark" loses some of its distinctiveness because of the use of a similar mark, regardless of what for.

There are six factors used to determine dilution by blurring:

  1. Degree of similarity
  2. Degree of distinctiveness
  3. Exclusive use/Policing
  4. Recognition
  5. Intent
  6. Actual association
Dilution by Tarnishment

Trademark dilution by tarnishment is when a "famous mark" has its reputation hurt because of a similarly named product of poor quality or unwholesome context.

Famous Mark

There is no hard line for what a famous mark is, but it has to be really famous. Usually around 70% recognition among the general consuming public is required.

To determine whether a mark is famous, four factors are used:

  1. The extent of duration and geographic reach
  2. The volume and geographic extent of sales
  3. The extent of actual recognition
  4. If it was registered before the creation of the principal register