Dilution Doctrine Broadens Trademark Law for Distinctive Names

The FTDA is intended to prevent both actual dilution and likely dilution. The owner of a famous mark is entitled to an injunction against another person who uses a mark or trade name in commerce that is likely to cause dilution of the famous ...

The Trademark Dilution Revision Act (TDRA) has · expanded the scope and practical impact of the dilution cause of action. However, the economic justification for the dilution cause of action, which requires no proof of actual harm or damages, remains as elusive as ... A. The Origins of the Dilution Doctrine

Unlike a normal cause of action for trademark infringement, trademark dilution gives broader rights to a few famous mark owners to prevent even non-confusing uses in order to protect the uniqueness of their marks against blurring and tarnishment.

suggests that a dilution law that targets only commercial uses, and ignores the host of other uses · that can influence a trademark's meaning, "irrationally targets commercial speech for a harm · done by a much larger set of acts." Rebecca Tushnet, Gone in 60 Milliseconds: Trademark Law · and Cognitive Science, 82 TEx. L. REV. 507, 566 (2008). See also Rebecca Tushnet, Truth and · Advertising: The Lanham Act and Commercial Speech Doctrine, in TRADEMARK LAW AND

changes to the protection of famous mark holders and, presumably, consumers, through the Trademark Dilution Revision Act (“TDRA”).112 · A. The Legislative Changes Make Shutting Down Secondary Marks ... The Federal Trademark Dilution Act Revisited, 9 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 503, 504 ... The degree of inherent or acquired distinctiveness of the famous mark.

sells the goods, and "self-evidently, the more distinctive the mark, the more effective is its selling power."3 Despite the obvious · importance of trademarks to the success of businesses and the · power wielded by consumers, the protection afforded trademarks

. . would be to create as the whole of trademark-protection law · property rights in gross in suitably unique marks”); see also Port, supra, at 447-49. See Lemley, supra, at 1699. ... B. State Law Dilution Claims ... distinguished between two types of dilution: “blurring” and “tarnishment.”21 Dilution through · “blurring” refers to the classic dilution injury posited by Schrecter. It is the “whittling away” of · a mark’s ability to serve as a unique and distinctive identifier when it is used for more than one

Professor Christine Haight Farley defies proponents to provide even a single concrete (and not hypothetical) example of a mark that has been significantly damaged because another firm has used that mark in a nonconfusing manner on different goods.5 Indeed, it is far from obvious how one establishes whether dilution even occurs—not just in a particular litigation, but whether it ever even occurs at all.6 How would one go about showing that the boîte in Brooklyn has harmed in any way the world-famous brand with which it shares a name? Judges too remain highly suspicious of antidilution law. M

See J. Thomas McCarthy, Dilution of a Trademark: European and United States · Law Compared, 94 Trademark Rptr 1163, 1163 (2004) (“No part of trademark law that I · have encountered in my forty years of teaching and practicing IP law has created so · much doctrinal puzzlement and judicial incomprehension as the concept of ‘dilution’ as a