Many small-business
owners want to secure the protection of their brand names, logos, and slogans from
unauthorized use by others. One powerful solution is to register one’s
trademarks with the U.S. Patent and Trademark Office (USPTO). While there are
many factors to consider when choosing which trademarks to use and register,
one important consideration is whether the trademark might run afoul of a
concept known as dilution by blurring.
What is dilution by blurring?
In short, dilution by
blurring (or simply “dilution”[1]) is the use of a trademark
which is sufficiently similar to a famous trademark such that it reduces the
public’s perception of the distinctiveness or uniqueness of the famous
trademark.[2] Unlike trademark
infringement, dilution does not require a likelihood of confusion. All that is
required is that your trademark impair the distinctiveness of a famous mark. Under
federal law, a mark is considered “famous” if it is “widely recognized by the
general consuming public of the United States as a designation of source” for
goods or services.[3]
Relevant considerations for whether a mark is “famous” include the extent and geographic
reach of advertising that uses the mark, the volume of sales of goods or
services that use the mark, and actual recognition of the mark.[4]
The owner of a famous trademark
can bring suit in federal court alleging that another mark is diluting their famous
mark. To determine whether a mark is impairing a famous mark, a court will look
to:
· the
degree of similarity between the two marks;
· the
distinctiveness of the famous mark; whether the owner of the famous mark is engaging
in substantially exclusive use of the mark;
· how
well-recognized the famous mark is;
· whether
the non-famous user of the mark intends an association with the famous mark;
and
· any
actual, provable association between the two marks.[5]
A business owner who is
considering use of a mark similar to a famous mark will want to keep these
factors in mind when deciding which marks they want to adopt. The easier it is
to make an association between your mark and a famous one, the more difficult
it will be to avoid an adverse ruling in court.
Common defenses to an allegation of
dilution
If
you are sued for trademark dilution, there are several defenses that you could
assert. In addition to arguing that your mark does not dilute a famous mark,
you could argue that your mark is:
1. A
parody of a famous mark;
2. Being
used in news reporting or commentary;
3. Being
used in a noncommercial manner (i.e., not being sold for a profit); and
4. Being
used in good faith primarily to describe one’s own product (also called fair
use).
This is a non-exhaustive list. You should seek the
advice of a qualified trademark attorney to determine if additional defenses
may be available in your particular situation. In the event of an adverse
ruling against the owner of a non-famous mark, a court will typically require that
party to stop use of their mark. Usually, monetary penalties follow only where
one has willfully caused or attempted to cause dilution of a famous mark. [6]
Recent, real-life examples of dilution
National Pork Board v. Supreme Lobster and
Seafood Co.[7]
The
National Pork Board is the owner of the famous trademark “The Other White
Meat.” When Supreme Lobster and Seafood Co. tried to register the tagline “The
Other Red Meat” as a trademark for fresh and frozen salmon, the National Pork
Board filed an opposition to the registration on grounds that it would dilute
its famous mark. The Trademark Trial and Appeal Board (TTAB), an administrative
tribunal of the USPTO, agreed, pointing to survey evidence showing that “The
Other White Meat” was recognized by over 80% of American adults, making it one
of the most famous slogans in the U.S. Going through the statutory factors, the
TTAB found that the two marks were very similar, that “The Other White Meat” was
highly distinctive and being used almost exclusively by the Pork Board, and
that evidence suggested Supreme Lobster knew about the Pork Board’s slogan and intended
an association with it. It therefore concluded that dilution was likely and
blocked the registration of “The Other Red Meat.”
Louis Vuitton v. Haute Diggity Dog, LLC[8]
The
world-renowned luxury-goods retailer Louis Vuitton sued the maker of the “Chewy
Vuitton” dog toy, which is designed to look like the famous Louis Vuitton
handbags. The court ruled that the dog toy did not dilute the famous Louis
Vuitton trademark because it was a successful parody, so the public would
obviously recognize it as a parody. This case demonstrates the importance of
ensuring any goods that parody famous marks are easily recognized as such.
In order to best protect
yourself from potential legal action from the owner of a famous mark, your best
bet is to steer clear of trademarks that closely resemble famous marks, even if
you are sure no one would confuse your brand for that of a famous one
(remember, confusion is not required for a finding of dilution). If you believe
that your mark falls under one of the exceptions listed above, be sure that it
truly does. For instance, ensure your parody is clearly a spoof of a famous
mark. If you’re claiming noncommercial use, make sure your mark is actually
being used for a noncommercial purpose. Finally, if you are unsure whether your
mark could be subject to a dilution claim, you may want to seek out the
assistance of an experienced trademark attorney.
[1]
There is a second type of dilution—by tarnishment—that is beyond the scope of
this blog post.
[2]
15 U.S.C. § 1125(c)(2)(B).
[3]
Id. at § 1125(c)(2)(A).
[4]
Id. at § 1125(c)(2)(A)(i)-(iii).
[5]
Id. at § 1125(c)(2)(B).
[6]
For additional information on dilution and possible defenses: https://www.justia.com/intellectual-property/trademarks/trademark-dilution/