Attorney Steve Trademark Law Essentials - What does it take to prove dilution of a famous trademark

Introduction

The concept of dilution of a famous trademark is an important concept in trademark law. Dilution of a famous trademark occurs when another company or individual uses a trademark that is similar to a famous trademark, diminishing the distinctive qualities of the famous trademark. Dilution of a famous trademark can occur through blurring, tarnishment, or other similar uses.

In order to prove dilution of a famous trademark, a plaintiff must show that their trademark is famous and that the other company or individual is using a similar trademark in a way that diminishes the distinctiveness of the famous trademark. Definition of dilution Dilution is defined by the Federal Trademark Dilution Act of 1995 as “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence of:

(1) competition between the owner of the famous mark and other parties,

or

(2) likelihood of confusion, mistake, or deception.”

In other words, dilution occurs when a famous trademark is used in a way that makes it less distinctive than it was before. This can occur through blurring, tarnishment, or other similar uses.

Blurring

Blurring is defined as “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” Blurring occurs when another company or individual uses a similar trademark to a famous trademark, causing confusion between the two marks. For instance, if a company called “Apple” were to use a similar logo to the one used by Apple, Inc., consumers might be confused as to which company was actually producing the goods or services associated with the mark.

Tarnishment

Tarnishment is defined as “association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.” Tarnishment occurs when another company or individual uses a similar trademark to a famous trademark in a way that harms the reputation of the famous trademark. For instance, if a company called “Apple” were to use a logo similar to the one used by Apple, Inc. but they were selling low-quality goods or services, that could harm the reputation of the Apple, Inc. trademark.

What the Plaintiff Must Show to Prove Dilution In order to prove that another company or individual is guilty of diluting a famous trademark, a plaintiff must show:

1. That their trademark is famous In order to prove dilution of a famous trademark, a plaintiff must first show that their trademark is, in fact, famous. The plaintiff must show that their trademark is distinctive and well-known by consumers. This can be done by showing that the trademark has been used for a long period of time, is well-known among consumers, and is associated with a unique product or service.

2. That the other company or individual is using a similar trademark Once the plaintiff has established that their trademark is famous, they must then show that the other company or individual is using a similar trademark. The plaintiff must show that the other company or individual is using a trademark that is similar enough to their own that it could be confused with the plaintiff's trademark.

3. That the use of the similar trademark is diminishing the distinctiveness of the famous trademark Finally, the plaintiff must show that the other company or individual's use of a similar trademark is diminishing the distinctiveness of the plaintiff's famous trademark. This can be done by showing that the other company or individual is using the similar trademark in a way that is either blurring or tarnishing the plaintiff's trademark.

Case examples

C. Dilution and Fair Use - The Barbie case (which found fair use as noted above)

Mattel also appeals the district court's grant of summary judgment on its trademark and dress dilution claims. The district court found that Forsythe was entitled to summary judgment because his use of the Barbie mark and trade dress was parody and thus "his expression is a non-commercial use."

Dilution may occur where use of a trademark "whittles away . . . the value of a trademark" by "blurring their uniqueness and singularity" or by "tarnishing them with negative associations." MCA, 296 F.3d at 903 (internal citations omitted). However, "tarnishment caused merely by an editorial or artistic parody which satirizes plaintiff's product or its image is not actionable under an anti-dilution statute because of the free speech protections of the First Amendment . . . ." 4 McCarthy, supra, § 24:105, at 24-225. A dilution action only applies to purely commercial speech. MCA, 296 F.3d at 904. Parody is a form of noncommercial expression if it does more than propose a commercial transaction. See id. at 906. Under MCA, Forsythe's artistic and parodic work is considered noncommercial speech and, therefore, not subject to a trademark dilution claim.

We reject Mattel's Lanham Act claims and affirm the district court's grant of summary judgment in favor of Forsythe. Mattel cannot use "trademark laws to . . . censor all parodies or satires which use [its] name" or dress. New Kids on the Block, 971 F.2d at 309.

See Mattel Inc. v. Walking Mt. Prods., 353 F.3d 792, 812 (9th Cir. 2003)

Conclusion

Conclusion In conclusion, in order to prove dilution of a famous trademark, a plaintiff must show that their trademark is famous and that the other company or individual is using a similar trademark in a way that diminishes the distinctiveness of the famous trademark. This can be done by showing that their trademark is distinct and well-known among consumers, that the other company or individual is using a similar trademark, and that the use of the similar trademark is either blurring or tarnishing the plaintiff's trademark. 

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