How Does Dilution Affect You as a Trademark Owner?

Hello:

Below is my continuation of Monday's post regarding Dilution.  

So how does Dilution affect you as a trademark owner or potential trademark owner? Well the law has recently changed. Now the law heavily favors owners of nationally knowned or recognized trademarks. Previously, an owner of a famous trademark had to show that a company that adopted their trademark but sold a totally unrelated product or service was ACTUALLY diluting their brand. Actual dilution could be shown by economic injury (loss profit or sales) via blurring (consumers began to confuse the two products) or tarnishment (the use of the famous mark by the subsequent company tarnishes the reputation of the famous mark). But actual dilution was hard to prove. Currently, the only thing an owner of a famous trademark has to prove is that there is a likliehood of confusion rather than actual economic injury. Trademark Dilution Revision Act (TDRA) This is much easier for a company to prove. One way a company can prove a likliehood of confusion is by simply doing customer surveys.

Second, a mark has to be recognized nationally by the general consuming public. TDRA. Previously, a highly distinctive or niche mark was considered famous even if it was only used in a specific geographic region. Now if your mark is famous or well knowned in the Southeast but not nationally, then you can not claim dilution by a subsequent mark.

Third, protection from Dilution is still afforded to trademarks that are satires, parodies, or criticisms of a famous mark. TDRA. This is called the fair use doctrine. So the website Perez Hilton, which is a satire or parody of the name, Paris Hilton, is protected from any dilution claim from Paris Hilton.

I want to close out this article with three key points:

1. If your mark is nationally known or recognized, be vigiliant in protecting your brand and trademark. The current law is on your side.

2. If you are a potential trademark owner, make sure you do not choose a trademark that is too similar to a nationally recognized trademark. Although you may not offer the same product or service, a company that owns a more famous mark can easily prevent you from using the mark.

3. Parodies or satires are protected. So if you have a website or an idea for a mark that parodies a famous mark, feel free to embark on that journey. Fair use is king!