The Federal Trademark Dilution Act of 1995 ({{uspl, 104, 98) is a
United States federal law
The law of the United States comprises many levels of codified and uncodified forms of law, of which the most important is the nation's Constitution, which prescribes the foundation of the federal government of the United States, as well as va ...
which protects famous
trademark
A trademark (also written trade mark or trade-mark) is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from others ...
s from uses that
dilute their distinctiveness, even in the absence of any likelihood of confusion or competition. It went into effect on January 16, 1996. This act has been largely supplanted by the
Trademark Dilution Revision Act of 2006 The Trademark Dilution Revision Act of 2006 (H.R. 683, ) was a law passed in the United States covering trademark law, and specifically dealt with trademark dilution.
The act amended the Trademark Act of 1946 and the later Federal Trademark Dilutio ...
(TDRA), signed into law on October 6, 2006.
Summary
Trademark dilution occurs when a use of a trademark by someone other than its owner impairs the mark's distinctiveness, whether or not the mark is used on a competing product or in a way that is likely to cause customer confusion.
A distinction is made between
trademark dilution
Trademark dilution is a trademark law concept giving the owner of a famous trademark standing to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of anoth ...
and
trademark infringement
Trademark infringement is a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the licence). Infringement may o ...
. Infringement occurs when someone other than a trademark's owner uses the mark in a way that is likely to cause customer confusion. For example, if someone other than the
Kodak
The Eastman Kodak Company (referred to simply as Kodak ) is an American public company that produces various products related to its historic basis in analogue photography. The company is headquartered in Rochester, New York, and is incorpor ...
corporation started marketing film under the mark KODAK, customers would probably be confused, because customers have come to associate KODAK film with a specific source and would probably believe that any KODAK film they see comes from that source.
If however, another company started marketing KODAK brand pianos, there might be little or no customer confusion, because customers would probably recognize that Kodak is unlikely to branch into the piano business or to use its film brand name on pianos. So customers would probably recognize that the KODAK pianos come from a different source. However, the KODAK pianos might still harm Kodak, because it would lessen the strong association, which the company has spent billions of dollars creating, between the word KODAK and film. Some customers, upon seeing the mark KODAK, would no longer instantly think of film—some would think of pianos instead. This lessening of the association between "KODAK" and "film" is trademark dilution.
Many states have long had statutory protection against trademark dilution. Until 1996, federal law protected only against trademark infringement. In that year, the FTDA took effect and provided federal protection against trademark dilution.
Until 2006, the FTDA was distinguished from most state trademark dilution laws in several ways:
(1) The FTDA protects only "famous" trademarks; most state statutes do not explicitly require trademarks to be "famous" to be protected against dilution. (2) The FTDA, as interpreted by the Supreme Court, protected only against "actual" dilution of a trademark, whereas most state statutes provided trademark owners with a remedy whenever they could show a "likelihood" of dilution. (3) The Supreme Court suggested (although it did not have occasion to hold) that the FTDA protected only against dilution by "blurring" and not against dilution by "tarnishment" (see below).
Amendments to the FTDA took effect on October 6, 2006. The Act still protects only famous marks. However, Congress amended the act so that it expressly provides protection against a use of a mark that is "likely" to cause dilution. The new statute thus eliminates the requirement of proving "actual dilution."
In addition, the amended statute specifically protects against dilution by "blurring" and dilution by "tarnishment." Dilution by "tarnishment" occurs when association arising from the similarity between a mark or trade name and a famous mark harms the reputation of the famous mark.
Definition of dilution
The new act defines the term "dilution" as "the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of
:(1) competition between the owner of the famous mark and other parties, or
:(2) likelihood of confusion, mistake, or deception."
Courts have previously found that dilution can occur as a result of either "blurring" or "tarnishment". "Blurring" typically refers to the "whittling away" of distinctiveness caused by the unauthorized use of a mark on dissimilar products; while "tarnishment" involves an unauthorized use of a mark which links it to products that are of poor quality or which is portrayed in an unwholesome or unsavory context that is likely to reflect adversely upon the owner's product. The legislative history suggests that both of these concepts are encompassed within the new law. In addition, the legislative history cites, as examples of the uses which would fall within the new law, the mark DUPONT for shoes, BUICK for aspirin and KODAK for pianos.
Remedy - Injunctive Relief
Ordinarily, only
injunctive relief
An injunction is a legal and equitable remedy in the form of a special court order that compels a party to do or refrain from specific acts. ("The court of appeals ... has exclusive jurisdiction to enjoin, set aside, suspend (in whole or in par ...
is available under the new law. However, if the defendant willfully intended to trade on the owner's reputation or to cause dilution of the famous mark, the owner of that mark may also be entitled to other remedies available under the United States Trademark Act, including defendant's profits, damages, attorneys' fees, and destruction of the infringing goods. The availability of monetary relief is a striking departure from state dilution laws, which have typically provided only for injunctive relief. The new law also provides that the ownership of a valid federal registration is a complete bar to the assertion of a dilution claim under state law, thereby effectively pre-empting state dilution claims against registered marks.
First Amendment concerns
In response to
First Amendment
First or 1st is the ordinal form of the number one (#1).
First or 1st may also refer to:
*World record, specifically the first instance of a particular achievement
Arts and media Music
* 1$T, American rapper, singer-songwriter, DJ, and rec ...
concerns, the new law expressly exempts certain uses of a famous mark, in particular:
:(1) "
fair use
Fair use is a doctrine in United States law that permits limited use of copyrighted material without having to first acquire permission from the copyright holder. Fair use is one of the limitations to copyright intended to balance the interests ...
" of a mark in the context of comparative commercial advertising or promotion;
:(2) non-commercial uses, such as
parody
A parody, also known as a spoof, a satire, a send-up, a take-off, a lampoon, a play on (something), or a caricature, is a creative work designed to imitate, comment on, and/or mock its subject by means of satiric or ironic imitation. Often its subj ...
,
satire
Satire is a genre of the visual, literary, and performing arts, usually in the form of fiction and less frequently non-fiction, in which vices, follies, abuses, and shortcomings are held up to ridicule, often with the intent of shaming ...
and editorial commentary; and
:(3) all forms of news reporting and news commentary.
Conclusions
Although approximately 25 states have already enacted laws that prohibit trademark dilution, this new federal law is intended to provide uniform and nationwide protection for famous marks. Thus, the new law renders academic the unsettled question of whether a state dilution claim can support injunctive relief against use in another state in which there is no dilution statute. Nevertheless, what constitutes a "famous" mark is likely to generate controversy in the courts and in the Trademark Office and may well slow the trademark clearance and registration process, as parties seek to settle what constitutes a "famous" mark. In addition, courts have traditionally dismissed state dilution claims unless there is also a finding of infringement or unfair competition based upon a likelihood of confusion. It remains to be seen how courts and the Trademark Office will interpret this new federal law, which has potentially far-reaching applications.
References
U.S. House Judiciary Committee
Acts of the 104th United States Congress
United States federal trademark legislation