Trademark dilution is the legal theory that can protect a famous mark’s distinctiveness from blurring, or its reputation from tarnishing, if a third party subsequently uses a mark identical or substantially similar to the famous mark. Dilution can happen even if the third party’s goods and services are so unrelated to those of the famous mark that the third party’s use is not likely to cause consumer confusion as to the source or origin of the goods or services.

There are two reasons you should care about trademark dilution:

  1. If your company has invested so much time and effort in one of your company’s trademarks that the mark is famous throughout the United States, you should embrace the theory of trademark dilution because it gives your company a cause of action against a newcomer who uses a mark identical or substantially similar to your company’s mark for goods or services entirely unrelated to those offered by your company. In those circumstances, your company would not be able to stop the third party’s use under a theory of trademark infringement by proving a likelihood of confusion, but your company might be able to prove that the third party’s use is likely to dilute the strength and uniqueness of its mark or its favorable reputation in consumers’ minds. A strong, unique, and positive mark is a valuable property that deserves a broad scope of protection, no matter what the size of its owner.
  2. You want your company’s marketing folks to understand that they should not recommend adopting a mark identical or substantially similar to a famous mark, even if your company’s goods or services are so different from those of the famous mark that consumers would not be likely to mistakenly think your company’s goods or services originate from the same source. Your marketing team needs to realize that the owner of a famous mark does not need to prove either that your company’s goods or services compete with theirs or that it has suffered any economic harm in order to stop your company’s use of its new mark. The owner of the famous mark just has to prove that your company’s subsequent use of the mark is likely to detract from the uniqueness of the famous mark, or diminish its strength, or create a less-positive connotation in consumers’ minds.

At this point, you might be asking yourself, “How do I know if a third-party mark used in a totally different field than ours might be a problem for us?” Under the Trademark Dilution Revision Act of 2006 (TDRA), a mark is famous, “if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.” 15 U.S.C. § 1125(c)(2)(A). Unfortunately, there is no authoritative list of “famous marks” in the U.S. that you can easily review. The TDRA does, however, provide guidance in terms of four nonexclusive factors for evaluating whether a mark is famous:

  1. The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.
  2. The amount, volume, and geographic extent of sales of goods or services offered under the mark.
  3. The extent of actual recognition of the mark.
  4. Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.