Trademark Dilution of A Famous Mark

By Justin M. Jacobson & Jeffrey E. Jacobson

In addition to trademark infringement claims that we have discussed in a previous article, including claims of likelihood of confusion, a trademark owner may also claim trademark “dilution.”  This is where a trademark owner asserts that they own a famous mark and that third-party’s use of their mark diminishes the strength or value of it.  Such reduction can be achieved by “blurring” the mark’s distinctiveness or by “tarnishing” the mark’s image by connecting the original, famous mark with something that may be distasteful or objectionable, even if there is no likelihood of confusion between the marks.

Similar to a plaintiff in a trademark infringement claim, the owner of a well-known or famous trademark can bring a claim in federal court.  In particular, the Federal Anti-Dilution Act (15 U.S.C. §1125) protects well-known and famous marks against dilution by a third party’s use of an identical or similar mark and provides numerous remedies in these instances, including injunctive relief (15 U.S.C.  §1125(c)(1)). Under this law, once a mark is proven to be a famous or well-known by the owner (15 U.S.C.  §1125(c)(2)(a)(i)-(iv), dilution of such a mark can occur by either blurring or tarnishment (15 U.S.C.  §1125).

Dilution by blurring occurs when a third-party uses a mark that impairs the “distinctive” or unique quality of an existing famous mark.  Unlike infringement cases, a third party’s use of the famous mark does not need to be in connection with the same goods or services similar to those offered by the plaintiff under its famous mark.  In fact, the owner must provide evidence of a trademark owner’s substantially exclusive use of its mark, the degree of recognition of the mark, the alleged infringer’s intent when selecting its mark, and the similarity between the famous mark and any allegedly diluting mark or trade name. These are the factors considered by the court in assessing a claim based on dilution by blurring (15 U.S.C.  §1125(C)(2)(B)).

In addition, dilution by tarnishment exists where a third party’s use of a mark or trade name similar to a trademark owner’s famous mark negatively impacts the goodwill and reputation associated with the famous mark.  Evidence that an allegedly diluting mark is used in an illicit or vulgar context is persuasive when demonstrating dilution by tarnishment (15 U.S.C.  §1125(C)(2)(C)).

In conclusion, if a famous mark is being diluted by tarnishment or blurring, it is imperative that the party take immediate action to police and stop any known infringers.  A failure on the part of a trademark owner could cause them to be seen as acquiescing, abandoning, or otherwise permitting the other party’s use of the same or a similar mark.

 This article is not intended as legal advice, as an attorney specializing in the field should be consulted.                     

(c) 2019 The Jacobson Firm, P.C.

About the author

Justin M. Jacobson, Esq. - Vice-President, The Jacobson Firm, P.C. - Attorney Specializing in Entertainment, Sports, Esports, Fashion and Art Law. In particular, The Jacobson Firm, P.C. handles Trademarks, Copyrights, Contracts, Estate Planning, Music Business and Brand Development on behalf of creative talent and lifestyle brands.

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