Trademark Dilution

What’s the Difference Between Trademark Infringement and Dilution?

Trademark infringement and trademark dilution have similarities, but they’re less alike than they initially appear. One main difference between the concepts relates to the types of marks they can apply to, while another difference lies in the components that make up each type of claim.

Dilution and infringement are also governed by different laws. Rules about infringement are found in the Trademark Act (aka the Lanham Act) while dilution is discussed in the Federal Trademark Dilution Act (later amended in the Trademark Dilution Revision Act, or TDRA).

Let’s look into the different requirements and elements that make up infringement and dilution claims.

Elements of Trademark Infringement

Trademark infringement happens when consumers could reasonably be confused about who is selling particular goods/services. Though other relevant factors may exist, for likelihood of confusion to be present, there must be:

• Similarity of marks
  The marks don’t have to be identical, but they must be similar in appearance, sound, and/or meaning.
• Similarity of goods/services
  The goods/services promoted by the marks could be identical, or they might exist in related markets and seek overlapping consumers.

Trademark infringement can apply to both famous and non-famous marks. The mark being infringed upon needs to be a clear identifier of the goods/services it promotes, but fame is not a requirement. For example, in 2016 the mark “Houseboat Blob” was denied registration after it was deemed confusingly similar to registered trademark “The Blob.” Both marks fell under Class 28, Toys and Sporting Goods, and promoted water floaties designed to launch people into the air.

Elements of Trademark Dilution

Trademark dilution does not require likelihood of confusion. For dilution to be present, the goods/services promoted by a problematic mark and a famous mark do not have to be related.

Google is such a famous and distinct mark, for example, that a clothing brand wouldn’t be able to adopt the name even though their offerings are completely unrelated.

With this in mind, there are two required elements connected to every viable dilution claim:

• Fame of mark
  If the mark being used without authorization use isn’t famous, there’s no dilution.
• Similarity of marks
  While the goods/services between marks don’t need to be similar for dilution to be present, the marks themselves must be identical or similar.

How do I know if a trademark is famous?

There are numerous factors that go into deciding whether a trademark is famous. As discussed in the Dilution Act, “a mark is considered famous if it is widely recognized by the general consuming public of the United States” as the identifier for the goods/services it’s connected to.

Standards for assessing whether the necessary recognition is met include:

• Geographic reach and scope of advertising/publicity connected to the mark
• Amount and reach of sales related to the mark
• Extent of actual mark recognition

Importantly, the standard for fame is high and hard to reach. For example, in 2015, social media site Pinterest was unable to prove their marks “Pinterest,” “Pin,” and “Pin It” were diluted by travel site Pintrips’s use of similar and identical marks. The reason? Pinterest’s trademarks weren’t sufficiently famous at the time.

Interested in protecting your own trademark through federal registration? Get started with our Trademark Service.

Types of Trademark Dilution

There are two types of trademark dilution: blurring and tarnishment. Both have the potential to lessen the quality of a famous trademark, but blurring impacts the mark’s distinctiveness, while tarnishment impacts the mark’s reputation.

• • Blurring
    Trademark dilution by blurring happens when the distinct quality of a famous trademark might be negatively impacted by another mark. (A mark’s distinctiveness corresponds to how well it identifies its goods/services as coming from a specific source.) There are multiple considerations when it comes to blurring, such as: how distinct the famous trademark is, how recognizable it is, and whether the unauthorized mark user meant to associate themselves with the famous mark.
  • Tarnishment
    Trademark dilution by tarnishment can have a negative impact on a famous trademark’s reputation. This usually occurs when a famous mark is used without authorization to sell goods/services that are of a lower quality or are in opposition to its brand values.

Real World Examples of Diluted Trademarks

To really understand how trademark dilution works, it helps to look at some real world examples. We’ll look at one example of proven dilution, and another of would-be dilution protected by the art of parody.

Beanie Babies and Dilution

For this dilution case, we turn to 1997 and the Beanie Babies frenzy that engulfed it. In Ty Inc. vs. Perryman, Ty alleged that their trademarks were diluted by Ruth Perryman’s Bargain Beanies business name and accompanying domain name.

For dilution to exist, a mark must be famous at the time the alleged dilution occurs. In ‘97, the Beanie Babies name was oh-so-known among American children (and adults), and the court agreed.

Specifically at issue in this case was the word “beanie,” which Perryman used to identify both Beanie Babies on her toy resale website, as well as toys made by others. Ultimately the court agreed with Ty on this matter: “beanie,” when associated with other toys, diluted Ty’s mark in relation to its own products.

Louis Vuitton and Parody

In a 2007 lawsuit, Louis Vuitton vs. Haute Diggity Dog, the luxury accessories brand accused the dog toy brand of trademark dilution. Haute Diggity Dog had released dog toys that riffed on high-end fashion brands, in this case with “Chewy Vuiton,” “CV,” and an imitation of Louis Vuitton designs.

Louis Vuitton claimed their brand was diminished by the mark, while Haute Diggity argued their mimicry was protected by parody. In the trademark world, successful parody includes an obvious and humorous connection between the parodying mark/the original mark and a clear reality that the marks don’t come from the same source.

The court sided with Haute Diggity Dog, saying Louis Vuitton’s marks wouldn’t likely be tarnished or blurred by Chewy Vuiton’s existence in the marketplace.

How to Avoid Dilution

When selecting your own trademark, avoiding dilution is critical. Not doing so can result in costly legal fees and/or rebranding aches down the line.

To avoid dilution (and infringement), it’s important to do ample research on your desired trademark. Known as a clearance search, the goal is for your research to reveal any existing trademarks that your mark may interfere with.

Because many (though not all) famous trademarks are registered with the U.S. Patent and Trademark Office, it’s easiest to begin your search by using the USPTO’s Trademark Search and Official Gazette to perform due diligence.

From there, due diligence may mean digging through state trademark databases, social media, and other relevant corners of the internet.

Of course, if a mark really is famous, it’s likely you’ve heard of it before doing any research. With this in mind, avoiding dilution means understanding the nuances of the fame game. If you have a trademark that riffs on, mimics, or incorporates a famous one, it might be worth speaking to a trademark lawyer to figure out where you sit from a legal standpoint.

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