Overview
This lecture covers trademark dilution, focusing on definitions, legal developments, key distinctions, and the requirements for proving dilution, as well as exceptions and class activity instructions.
Trademark Dilution: Definition and Concepts
- Trademark dilution protects famous marks from uses that lessen their distinctiveness, even without confusion or competition.
- Two main types: blurring (weakens uniqueness by free riding) and tarnishment (harms reputation through negative association).
- Only owners of famous trademarks can bring dilution claims.
Legal Development: U.S. Law on Dilution
- Trademark dilution originated in early legal theory and was federally codified in 1995 under the Federal Trademark Dilution Act (FTDA).
- The FTDA was influenced by the TRIPS Agreement (Article 16) and state-level dilution laws.
- A Supreme Court case (Moseley v. Victoria’s Secret) initially required proof of actual dilution, not just likelihood.
- The 2006 Trademark Dilution Revision Act switched the standard to "likelihood of dilution."
- The 2006 Act clarified definitions and added limitations and exceptions, such as fair use and comparative advertising.
Key Statutory Factors and Protections
- Courts assess fame using factors like advertising reach, sales, and public recognition.
- No official U.S. registry for famous marks; other countries may have one.
- Blurring factors include similarity, exclusivity of use, and intent to associate.
- Tarnishment is defined as harm to reputation via association with the famous mark.
- The 2006 Act permits enforcement regardless of confusion or direct competition.
Limitations and Exceptions
- Statutory exceptions include nominative and descriptive fair use, noncommercial use, and news reporting or commentary.
- The Act aims to balance trademark protection with legitimate third-party uses.
Example and Class Activity
- Class assignment involves analyzing a "Starbucks for dog services" scenario for possible infringement, dilution, or fair use.
- Students should consider the presence or absence of confusion, dilution, and exceptions.
Key Terms & Definitions
- Trademark Dilution — Use that weakens the distinctiveness or reputation of a famous mark, even without confusion or competition.
- Blurring — Dilution through weakening of a mark’s uniqueness by association with unrelated products or services.
- Tarnishment — Dilution by harming the reputation of a famous mark through negative associations.
- Famous Mark — A trademark widely recognized by the general consuming public.
- Fair Use — Legitimate use of a trademark in contexts like commentary, parody, or comparative advertising.
Action Items / Next Steps
- Complete and submit the class activity analyzing the Starbucks scenario.
- Participate in the online discussion and review related problem questions.
- Prepare any assigned presentations, videos, or multiple-choice responses for this week.