This article will discuss the law of “dilution” under the federal trademark laws. A key element of a trademark infringement claim is a likelihood of confusion resulting from the defendant’s use of the offending mark. For a dilution claim, however, there is no requirement to show a likelihood of confusion from the defendant’s use of the offending mark. Nor is it required that the goods or services for which the marks are used are in competition with those of the defendant, or that the owner of the mark will suffer actual economic injury as a result of the use of the offending mark. The threshold requirement for a dilution claim is that the mark is “famous.” Dilution can occur in one of two ways, either dilution by “blurring” or “tarnishment.”
The Current Dilution Statute
In 1996, Congress passed the Federal Trademark Dilution Act (the FTDA), contained in 15 U.S.C. §1125(c), with separate statutory provisions for a dilution claim. In 2006, Congress enacted the Trademark Dilution Revision Act (the TDRA), which replaced the FTDA. It altered the requirements for a dilution claim in significant respects. In broad stroke, the changes include: (1) altering the standard for a dilution claim from “actual dilution” to a “likelihood of dilution;” (2) a reconfiguration of the factors used to determine whether a mark is “famous;” (3) that non-inherently distinctive marks are subject to protection; and (4) expanding the exceptions to a dilution claim.
