As part of the content we produce for our readers, this is Part XIV of our ongoing series on the “Fundamentals of Trademarks,” where a number of continuing posts have been dedicated to exploring trademarks in detail & depth. In Part XIII, we discussed and hammered on “Naked Licensing – The Fourth Way through which Trademark Rights Could be Lost or Terminated,” which concluded our discussion on the four ways through which trademark rights can be lost or terminated.
Having exhausted that list of ways through which trademark rights can be lost or terminated, we have now switched gears and shifted our attention to the issue of how the trademark law and issues related to trademark rights and infringement are enforced. To ensure that we keep you ahead of the game, we shall hammer on five key aspects of trademark enforcement, including “Dilution,” “Initial Interest Confusion,” “Reverse Confusion,” “Likelihood of Confusion,” and “Standing to Sue.” For the purposes of clarity and delivery of content, we shall discuss and hammer on these aspects of trademark enforcement in individual posts. In this regard, we have started with the first in this blog post titled “Dilution – The First Key Aspect of Trademark Enforcement,” which is Part XIV of the series.
Dilution – The First Key Aspect of Trademark Enforcement
When circumstances are appropriate, the owner of a popular mark may assert, in addition to infringement, a dilution cause of action. While the likelihood of dilution is the standard, the likelihood of confusion (to be discussed later) is not required as proof of dilution. Ideally, the dilution law is enforced to ensure that the owners of famous marks do not experience a decline in the strength of their marks. However, the dilution law does not protect against the confusion of consumers pertaining to the source of a good or product (this entails trademark infringement).
Under the Lanham Act (Trademark Act of 1946), there are two forms of dilution: (1) dilution by tarnishment and (2) dilution by blurring.
1. Dilution by Tarnishment
This form of dilution occurs when a famous mark’s reputation is damaged or is likely to be damaged by the association between it and a third-party mark. For instance, a third-party mark associated with a famous mark may be used on inferior or low-quality products. Due to this association, the famous mark may be tarnished, contrary to a situation where the third-party mark would be used on superior goods or those that are comparatively similar in terms of quality. Further, if a third-party mark is used in relation to unwholesome or unsavory products or goods, tarnishment may also occur.
2. Dilution by Blurring
Sometimes, a mark similar or identical to a popular mark may be used to the extent that the use impairs the strength or distinctiveness of the famous mark. In such a case, this form of dilution occurs. However, it is crucial to understand that a dilution claim may not need a demonstration of relatedness between the respective products or goods. While these claims are important, they have significantly dropped over the past decade following a substantial change in enforcement strategies and policies.
In the next blog post and Part XV of the series, we shall move the discussion forward by hammering on “Initial Interest Confusion and its Role in Trademark Enforcement.”
Until then, stay tuned for more legal guidance, training, and education. In the interim, if there are any questions or comments, please let us know at the Contact Us page!
Always rising above the bar,
Isaac T.,
Legal Writer, Author, & Publisher.