Originally Posted 10/23/06
First I have to say sorry for not posting in so long – It’s been a crazy few months around here.
Anyway we had a major change in the law about two weeks ago that I felt we needed to comment on. On October 6, 2006 the Trademark Dilution Revision Act of 2006 was signed into law. The law was created in response to Moseley v. Victoria Secret, in which the Supreme Court among other things, required a showing of actual dilution in order for famous marks to be able to protected from bluring of their distinctive character or tarnishment of the mark. The act now only requires the holder of a famous mark to show that a defendents actions caused a liklihood of dilution by bluring or tarnishment regardless of the presence or absence of actual confusion.
So what does this all mean? Blurring occurs between a mark, company name or trade name and and a famous mark when the use of the mark, trade name or company name impairs the distinctiveness of the famous mark. Essentially, it impairs the source identification function of a trademark. If there is such widespread use of similar marks, whether or not the famous mark is connected or affiliated with all the other products becomes blured. An important factor to note is that this happens in the absence of a liklihood of confusion – the traditional standard for trademark infringment. Basically the arguent is that the mark is so famous that any use of the mark would blur whether or not the products were related. An example would be McDonalds for use with jackhammers. While the goods are not related enough to cause confusion, the use of the term with jackhammers causes McDonalds Corporation’s trademark to loose distinctiveness.
Tranishment referes to damage to a famous mark due to a unflattering or negative association. Therefore if an individual uses a famous mark in a manner that would not be considered traditional trademark infringment, but because of the nature of the use, quality of goods, or other factors – implies a negative or harmful association or sponsorship on the part of the holder of the famous mark.
However, given 1st amendment considerations, the new act carves out exceptions for descriptive use, commentary, criticism, parody or other non-commercial use. You can count on a lot of future littigation under this section as courts wade through what is a legitimate action under the exception and what just doesn’t cut it. Interestingly enough there is also an exemption if the mark in question is federally registered, and acts as a complete bar to brining a dillution claim – so basically if you are thinking of using a mark that may cause dillution, your best bet is to try to get a registration as fast as possible – of course you would have to get by the PTO first.
So basically, the standard now is thata famous mark holder just has to show that another mark just has the potential of causeing bluring or tarnishment, not that the bluring or tarnishment has actually happened
All in all, while the act does take strides to reverse the decision in Mosely, several questions still remain, including what exactly is a famous mark? What level of fame are we talking about and are we talking nationwide fame, local fame or both? For example in Colorado, I would probablly say that the mark FAT TIRE for beer would be a famous mark owned by the New Belgium Brewery for our region – but it probablly wouldn’t be considered famous in a national sense (not yet anyway !). Additionally, the act has created some new questions such as what a showing of proof of a liklihood of dilution would consist of? What sorts of evidence and how much evidence is needed to show a liklihood of dillution? Until we get something similar to the Dupont factors like we have for standrad trademark infringment, that remains the $50,000.00 question. At the end of the day, i guess I should just thank congress for continued job security and we’ll end this posts like so many others – we will just have to wait and see !
