Here at the Law Office of Vincent Miletti, Esq. and the home of the #UnusuallyMotivated movement, we take pride as a resilient and dependable legal services firm, providing such services in both a traditional and online, web-based environment. With mastered specialization in areas such as Employment and Labor Law, Intellectual Property (IP) (trademark, copyright, patent), Entertainment Law, and e-Commerce (Supply Chain, Distribution, Fulfillment, Standard Legal & Regulatory), we provide a range of legal services including, but not limited to traditional legal representation (litigation, mediation, arbitration, opinion letters, and advisory), non-litigated business legal representation and legal counsel, and unique, online legal services such as smart forms, mobile training, legal marketing, and development.

Still, here at Miletti Law®, we feel obligated to enlighten, educate, and create awareness about how these issues and many others affect our unusually motivated® readers and/or their businesses. Accordingly, to achieve this goal, we have committed ourselves to create authoritative, trustworthy, & distinctive content. Usually, this content is featured as videos posted on our YouTube Channel and blogs that are published on our website WWW.MILETTILAW.COM. With that, the ball is in your court and you have an effortless obligation to subscribe to the channel and sign up for the Newsletter on the website, which encompasses the best way to ensure that you stay in the loop and feel the positive impact of the knowledge bombs that we drop here!

As the authoritative force in Employment Law, it only seemed right to introduce one of the many upcoming series where we remain persistent in introducing a variety of topics, which will look to not only educate but also deliver in a sense that only Miletti Law® can. In this regard, this is Part XIV of our ongoing series on the “Fundamentals of Trademarks,” where a number of continuing blogs 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 blogs. In this regard, we have started with the first in this blog 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 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.